Geographical Indications Act 2003

Link to law: http://laws.gov.ag/acts/2003/a2003-21.pdf

No. 21 of 2003. The Geographical Indications 1 ANTIGUA
Act 2003. AND

BARBUDA

[ L.S. ]
I Assent,

James B. Carlisle,
Governor-General.

ANTIGUA AND BARBUDA

No. 21 of 2003

AN ACT to provide for the protection and registration of
geographical indications and related matters.

[ 3lst December, 2003 ]

ENACTED by the Parliament of Antigua and Barbuda as
follows -

PART I

1. This Act may be cited as the Geographical Indications Act, Short title and
2002 and shall come into force on a clay appointed by the Minister commencement.
by notice published in the Gazette.

2. In this Act,

"Court" means the High Court;

Interpretation.

"geographical indication" means an indication which iden-
tifies a good as originating in the territory of a country, or
a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially
attributable to its geographical origin;

ANTIGUA 2 llre Geographical Indications No. 21 of 2003.
AM) Act 2003.

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"good" means any natural or agricultural product or any
product of handicraft or industry;

"Miriister" means the Minister to whom responsibility for
intellectual property has been assigned;

"Paris Convention" means the Paris Convention for the
Protection of Industrial Property of March 20,1883, as last
revised;

"producer" means -

(i) any producer of agricultural products or any
other person exploiting natural products;

(ii) any manufacturer of products of handicraft, or
industry; and

(iii) any trader dealing in the said products;

"Register" means the Register of Geographical Indications;

"Registrar" means the Registrar of Intellectual Property
appointed under the Registrar of Intellectual Property
Ofice Act, 2003.

PART I1

PROTECTION OF GEOGRAPHICAL INDICATIONS

Civil proceedings. 3. (1) Any interested person and any interested group of pao-
ducers or consumers may institute proceedings in the Court to
prevent, in respect of geographical indication -

(a) the use of any means in the designation or presenta-
tion of a good that indicates or suggests that the
good in question originates in a geographical area
other than the true place of origin in a manner which
misleads the public as to the geographical origin of
the good;

(b) any use which constitutes an act of unfair competition
within the meaning of Article 10bis of the Paris
Convention; or

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(c) use of a geographical indication identifying wines
for wines not originating in the place indicated by
the geographical indication in question or identifying
spirits for spirits not originating in the place
indicated by the geographical indication in
question, even where the true origin of the goods is.
indicated or the geographical indication is used in
translation or accompanied by expressions such as
"kind", "type", "style", "imitation" or the like.

(2) In proceedings under this section, the court may, in
addition to issuing an injunction, award damages and gant any
other remedy or relief as it may deem fit.

4. Protection under this Act shall be available - Availability of
urotection

(a) regardless of whether a geographical indication has zi:sE?n:fand
been registered; but registration of a geographical presumption.
indication under Part I11 of this Act shall, in any
proceedings under this Act, raise a presumption that
such indication is a geographical indication within
the meaning of section 2; and

(b) against a geographical indication which, although
literally true as to the territory, region or locality in
which the goods originate, falsely represents to the
public that the goods originate in another territory.

5. (1) In the case of homonymous geographical indications Homonymous
for wines, protection shall be accorded to each indication, subject ge?graphicai

~ndlcahons for
to paragraph (6) of section 4. wines.

(2) The Registrar, in cases of permitted concurrent use of such
indications, shall determine the practical conditions under which
the homonymous indications in question will be differentiated
from each other, taking into account the need to ensure equitable
treatment of the producers concerned and that consumers are
not misled.

6. The following shall not be protected as geographical Exclusion from ,
indications - protection.

(a) indications which do not correspond to the defini-
tion in section 2;

ANTIGUA 4 The Geographical Indications No. 2 1 or LWJ.
AND Act 2003.

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(b) indications which are, contrary to public order or
d t y ;

(c) geographical indications which are not or cease to
be protected in their country of origin, or which have
fallen into disuse in that country.

Offences. 7. Any person who knowingly and with intent to deceive
performs any of the acts referred to in Section 3 commits an
offence and is liable on summary conviction to a fine not
exceeding fifty thousand dollars or to a term of imprisonment
not exceeding three years.

PART III

REGETRATION OF GEOGRAPHICAL INDICATIONS

Application for 8. (1) An application for the registration of a geographical
registration; right indication shall be filed with the Registrar.
to file application
and representa-
tion. (2) The following shall have the right to file an application:

(a) natural persons or legal entities carrying on an activity
as a producer in the geographical area specified in the
application, with respect to the goods specified in .the
application, as well as groups of such persons; and

(6) any competent authority.

(3) Where an applicant's ordinary residence or principal place
of business is outside Antigua and Barbuda, he shall be
represented by a registered agent resident and practising in
Antigua and Barbuda, before the Registrar of the Intellectual
Property Office. The procedure for the registration of an agent
shall be prescribed in the regulations.

Contents of appli- 9. An application for the registration of a geographical indi-
cation. cation shall specify -

(a) the name, address and nationality of the natural
person or legal entity filing the application, and the
capacity in which the applicant is applying for
registration;

(b) the geographical indication for which registration is
sought;

N0.21 of 2003. rhe Geographi@# @dimtiom 5
Act 2003.

(c) the geographical areas to which the geobphical
indication applies;

(d) the goods for which the geographical indication
applies;

(e) the quality, reputation or other characteristic of the
goods for which the geographical indication is used,

and shall be subject to the payment of the prescribed fee.

10. (1) The Registrar shall examine the application to ascer- Examination,
tain whether it complies with the requirements of sections 6(b), O P P O S ~ ~ ~ O ~ S
8(2) and 9 and tbe Regulations. reglstratlon.

(2) Where the Registrar finds that the conditions referred to
in subsection (1 ) are fulfilled, he shall cause the application, as
accepted, to be published in the prescribed manner.

(3) Any interested person or competent authority may, within
the prescribed period and in the prescribed manner, give notice
to the Registrar of opposition to the registration of the
geographical indication on the grounds that one or more of the
requirements of sections 6,8(2) and 9 are not fulfilled.

(4) The Registrar shall send a copy of such a notice to the
applicant, and, within the prescribed period and in the prescribed
manner, the applicant shall send to the Registrar a counter-
statement of the grounds on which he relies for his application; if
he does not do so, he shall be deemed to have abandoned the
application.

(5) If the applicant sends a counter-statement, the Registrar
shall furnish a copy thereof to the person giving notice of
opposition and, after hearing the parties, if either or both wish to
be heard, and considering the merits of the case, shall decide
whether the geographical indication should be registered.

(6) Where the Registrar finds that the conditions referred to in
subsection (1) are fulfilled, and either -

(a) the registration of the geographical indication has
not been opposed within the prescribed time limit; or

ANTIGUA 6 The Geographical Indications No. 21 of 2003.
AND Act 2003.

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(b) the registration of the geographical indication has
been opposed and the opposition has been decided
in the applicant's favour,

he shall register the geographical indication, publish a reference
to the registration and issue to the applicant a certificate of
registration. Otherwise, he shall refuse the application.

Right of us 2 . 11. Only producers carrying on their activity in the
geographical area specified in the Register shall have the right to
use a registered geographical indication, in the course of trade,
with respect to the products specified in the Register, provided
that such products possess the quality, reputation or other
characteristic specified in the Register.

Cancellation and 12. (1) Any interested person or any competent authority
rectification of may apply to the Court for -
registration and
publication.

(a) the cancellation of the registration of a geographical
indication on the ground that it does not qualify for
protection as such having regard to section 6; or

(b) the rectification of the registration of a geographical
indication on the ground that the geographical area
specified in the registration does not correspond to
the geographical indication, or that the indication of
the products for which the geographical indication
is used or the indication of the quality, reputation or
other characteristic of such products is missing or
unsatisfactory.

(2) In any proceedings under this section, notice of request
for cancellation of rectification -

(a) shall be served on the person who filed the
application for registration of the geographical
indication or his successor in title; and

(b) shall, by a publication in the prescribed manner, be
given to all persons having the right to use the
geographical indication under section 1 1.

(3) The persons referred to in subsection (2) and my other
interested person may, within a period which shall be specified
by the Court in the said notice and publication, apply to jom m
the pmeehgs.

No. 21 of 2003. The Geographical Indications 7 ANTIGUA
Act 2003. AND

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(4) The Registrar of the Court shall notify the Registrar of the
decision of the Coua or the decision on any appeal therefrom
and the Registrar shall record it and publish a reference thereto
as soon as possible.

13. (1) @) The Registrar shall maintain a Register in which Register.
he shall record all matters required by this Act
to be recorded.

(b) The Register may be consulted by any person,
and any person may obtain extracts therefrom,
under' the conditions prescribed in the
Regulations.

(2) The Registrar shall publish in the Gazette or in an intellectual
property journal published under the authority of the Registrar,
or in both, all the publications provided for in this Act.

14. (i) The Registrar may, subject tcs Regulations made under Correction of
this Act, correct any error of translation or transcription, clerical e"On and

extension of error or mistake in any application or document filed with the time.
Registrar or in any matter recorded pursuant to this Act or the
Regulations.

(2) If the Registrar is satisfied that the circumstances justify it,
he may, upon receiving a written request, extend the time for
doing any act or taking any proceeding under this Act and the
Regulations, upon notice to parties concerned and upon such
terms as he may direct; and notwithstanding that the time for
doing the act or taking the proceeding has expired, the Registrar
may grant an extension of time.

15. The Registrar shall, before exercising any discretionary Exercise of
power vested in him by this Act adversely to any party to a discretionary
proceeding before him give that party an opportunity to be heard.

15. (1) The Court shall have jurisdiction in cases of dispute Competence of
relating to the application of this Act and in matters which under Court and
this Act are to be referred to the Court. appeals.

(2) Any decision taken by the Registrar under this Act may be
the subject of an appeal by any m t e d party before the Court
and such appeal shall be filed within two months of the date of
the W o n .

ANTIGUA 8 The Geographical Indications No. 21 of 2003.
AND Act 2003.

BARBUDA

PART IV

SPECIAL PROVISIONS CONCERNING MARKS;
EXCEPTIONS

Misleading marks. 17. The Registrar shall, on his own motion or at the request of
an interested party, refuse or invalidate the registration of a
trademark which contains or consists of a geographical indication
with respect to goods not originating in the temtory indicated, if
use of the indication in the trademark for such goods in Antigua
and Barbuda is of such a nature as to mislead the public as to the
true place of origin.

Marks conflicting 18. The registration of a trademark for wines which contains
with a geographi- or consists of a geographical indication identifying wines or of a
cal indication for
wines and spirits. trademark for spirits which contains or consists of a geographical

indication iden-g spirits shall be refused or invalidated by
the Registrar on his own motion or at the request of an interested
party, with respect to such wines or spirits not having this origin.

Exceptions 19. (I) Nothing in this Act shall prevent continued and similar
prior use in Antigua and Barbuda of a particular geographical

users. indication of another country identifying wines or spirits in
connection with goods or services by any national or domiciliaries
of Antigua and Barbuda who have used that geographical
indication in a continuous manner with regard to the same or
related goods or services in Antigua and Barbuda either -

(a) for at least ten years preceding April 15,1994; or

(b) in good faith preceding that date.

(2) Where a trademark has been applied for or rcghted m
good faith, or wherc rights to a trademark have been acquired
through we in good faith either -

(a) befate the date of entry mto force of this Act; or

( 8 ) before thc geographical indication is protected m
its country of origin,

No. 2 1 of 2003. The Geographical Indications 9 ANTIGUA
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(3) Nothing in this Act shall apply in respect of

(a) a geographical indication of any country with respect
to goods or services for which the relevant indica-
tion is identical with the term customary in common
language as the common name for such goods or
services in Antigua and Barbuda; or

(b) a geographical indication of any other country
with respect to products of the vine for which the
relevant indication is identical with the customary
name of a grape variety existing in Antigua and
Barbuda as of Jahuary 1,1995.

(4) Any request for relief made under Part I1 of this Act in
connection with the use or registration of a trademark must be
presented within five years after the adverse use of the protected
indication has become generally known in Antigua and Barbuda
or after the date of registration of the trademark in Antigua and
Barbuda, provided that the trademark has been published by
that date, if such date is earlier than the date on which the adverse
use became generally known in Antigua and Barbuda and
provided that the geographical indication is not used or registered
in bad faith.

(5) This Act shall in no way prejudice the right of any person
to use, in the course of trade, that person's name or the name of
that person's predecessor in business, except where such name
is used in such a manner as to mislead the public.

PART V

mwmnoNs

20. The Minister may make Regulations prescribing all Regulations.
matbers thatarercquiredor@#edby~Act tobe~~
or are necessary or convenient to be prescribed for giving effect
to the purposes of this Act.

ANTIGUA 10 The Geographical Indications No. 21 of 2003.
AND Act 2003.

BARBUDA

Passed the House of Representatives Passed the Senate this 25th day
this 8th day of September, 2003. of September, 2003.

B. Harris,
Speaker.

S. Walker,
Clerk to the House of Representatives.

M. Percival,
President.

S. Walker,
Clerk to the Senate.

Printed at the Government Printing Office, Antigua and Barbuda,
by Walter A. Massiah, Government Printer

-By Authority, 2003.
8-12.03 [Price $4.35 ]
Read Entire Law on laws.gov.ag