Protection of Geographical Indications Act 2002


No 17 of 2002






C
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PROTECTION OF GEOGRAPHICAL
INDICATIONS ACT 2002

Protection of Geographical Indications Act 2002 Arrangement of Sections





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C
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PROTECTION OF GEOGRAPHICAL INDICATIONS
ACT 2002

Arrangement of Sections
Section

PART I - PRELIMINARY 5
1 Short title and commencement.........................................................................5
2 Act binds the Crown ........................................................................................6
3 Interpretation....................................................................................................6

PART II - PROTECTION OF GEOGRAPHICAL INDICATIONS 6
4 Civil Proceedings.............................................................................................6
5 Scope of Protection ..........................................................................................7
6 Homonymous Geographical Indications For Wines........................................7
7 Exclusion from Protection ...............................................................................7
8 Penalty .............................................................................................................8

PART III - REGISTRATION OF GEOGRAPHICAL INDICATIONS 8
9 Application for registration..............................................................................8
10 Contents of Application ...................................................................................8
11 Processing of application .................................................................................9
12 Right of use......................................................................................................9
13 Cancellation and rectification of registration.................................................10
14 Registers.........................................................................................................10

PART IV - ADMINISTRATION 10
15 Gazetting of publications ...............................................................................10

Arrangement of Sections Protection of Geographical Indications Act 2002





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16 Corrections of mistakes and extension of time ..............................................11
17 Exercise of discretionary powers ...................................................................11
18 Jurisdiction of the Court .................................................................................11
19 Appeals to the Minister ..................................................................................11
20 Regulations.....................................................................................................11

PART V - SPECIAL PROVISIONS CONCERNING MARKS AND
EXCEPTIONS 12
21 Misleading trademarks ...................................................................................12
22 Trademarks conflicting with a geographical indication for wines and

spirits ..............................................................................................................12
23 Exceptions regarding prior users....................................................................12

Protection of Geographical Indications Act 2002 Section 1





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C
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PROTECTION OF GEOGRAPHICAL INDICATIONS
ACT 2002

No 17 of 2002

AN ACT TO MAKE PROVISION FOR THE PROTECTION OF
GEOGRAPHICAL INDICATIONS

I assent,
TAUFA'AHAU TUPOU IV,

23rd December, 2002

[3rd September, 2002]

BE IT ENACTED by the King and Legislative Assembly of Tonga in the Legislature
of the Kingdom as follows:

PART I - PRELIMINARY

1 Short title and commencement
(1) This Act may be cited as the Protection of Geographical Indications Act

2002.

(2) This Act shall come into operation on a date to be proclaimed by His
Majesty in Council.



Section 2 Protection of Geographical Indications Act 2002





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2 Act binds the Crown
This Act binds the Crown.

3 Interpretation
In this Act, unless the context otherwise requires,

“Court” means the Supreme Court of Tonga;

“geographical area” means the territory of the country, or region or
locality in that territory as the case may be which constitutes the
geographical origin of the goods;

“geographical indication” means an indication which identifies 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;

“good” means any natural or agricultural product or any product of
handicraft or industry;

“Minister” means the Minister of Labour, Commerce and Industries;

“producer” means:
(a) any producer of agricultural products or any other person

exploiting natural products;
(b) any manufacturer of products of handicraft, or industry; and
(c) any trader dealing in the said products.

“register” means the Register of Geographical Indications maintained
under section 14;

“Registrar” means the Registrar of Industrial Property holding office in
terms of section 37 of the Industrial Property Act.

PART II - PROTECTION OF GEOGRAPHICAL
INDICATIONS

4 Civil Proceedings
Any interested person and any interested group of producers or consumers may
institute proceedings in the Court to prevent, in respect of geographical
indications —

(a) the use of any means in the designation or presentation of a good
that indicates or suggests that the good in question originates in a

Protection of Geographical Indications Act 2002 Section 5





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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 the Protection of Unfair Competition Act 2002; or

(c) any use in 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;

and in proceedings under this section, the Court may, in addition to issuing an
injunction, award damages and grant any other civil remedy or relief as it shall
deem fit.

5 Scope of Protection
Protection under this Act shall be available:

(a) regardless of whether a geographical indication has been registered
provided, however, that registration of a geographical indication
under Part III of this Act shall, in any proceedings under this Act,
raise a presumption that such indication is a geographical
indication; and

(b) against a geographical indication which, although laterally 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.

6 Homonymous Geographical Indications For Wines
In the case of homonymous geographical indications for wines, protection shall
be accorded to each subject to paragraph (b) of Section 5. In cases of permitted
concurrent use of such indications, the Registrar 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.

7 Exclusion from Protection
The following shall not be protected as geographical indications:

(a) indications which do not correspond to the definition of
“geographical indication”;

Section 8 Protection of Geographical Indications Act 2002





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(b) indications which are contrary to public order or morality;
(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.

8 Penalty
Any person who intentionally performs any act in contravention of this Act
commits an offence, and is liable upon conviction to a fine not exceeding
T$5,000 or to imprisonment for a term not exceeding 5 years or to both.

PART III - REGISTRATION OF GEOGRAPHICAL
INDICATIONS

9 Application for registration
(1) The application for registration of a geographical indication shall be filed

with the Registrar.

(2) Any natural person, competent authority or legal entity 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 shall have the right to file an application.

10 Contents of Application
The application 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;
(c) the geographical area to which the geographical indication applies;
(d) the goods for which the geographical indication applies; and
(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.

Protection of Geographical Indications Act 2002 Section 11





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11 Processing of application
(1) The Registrar shall examine whether the application complies with the

requirements of Sections 7, 9(2) and 10 and the Regulations pertaining
thereto.

(2)
(a) Where the Registrar finds that the conditions referred to in

subsection (1) hereof are fulfilled, he shall cause the application, as
accepted, to be published in the gazette.

(b) 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 7, 9(2) and 10 are not fulfilled.

(c) 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 statement to the opposition to
his application; if he does not do so, he shall be deemed to have
abandoned the application.

(d) 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.

(3) 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
(b) the registration of the geographical indication has been opposed and

the outcome 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.

12 Right of use
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.

Section 13 Protection of Geographical Indications Act 2002





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13 Cancellation and rectification of registration
(1) Any interested person may request the Court to order:

(a) the cancellation of a registration of a geographical indication on the
ground that it does not qualify for protection as such having regard
to Section 7;

(b) the rectification of a 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 the request for
cancellation or 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 Gazette be given to all persons having
the right to use the geographical indication under Section 12.

(3) The persons referred to in subsection (2) and any other interested person
may, within a period which shall be specified by the Court in the said
notice, apply to join in the proceedings.

14 Registers
The Registrar shall maintain a Register of Geographical Indications in which all
the recordings provided for in this Act shall be entered which may be consulted
by any person who may obtain copies of any entry subject to prescribed fees and
conditions.

PART IV - ADMINISTRATION

15 Gazetting of publications
The Registrar shall publish in the Gazette all the publications provided for in this
Act.

Protection of Geographical Indications Act 2002 Section 16





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16 Corrections of mistakes and extension of time
(1) The Registrar may, subject to any provision in the regulations, correct any

mistake in any application or document filed with his Office or in any
recording effected 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. The extension may be
granted though the time for doing the act or taking the proceeding has
expired.

17 Exercise of discretionary powers
The Registrar shall give any party to a proceeding before him an opportunity of
being heard before exercising adversely to that party any discretionary power
vested in him by this Act or the regulations.

18 Jurisdiction of the Court
The Court shall have jurisdiction in respect of any matter arising under this Act.

19 Appeals to the Minister
Any decision taken by the Registrar under this Act may be the subject of an
appeal to the Minister by any interested party and such appeal shall be filed
within two months of the date of the decision.

20 Regulations
(1) The Minister may, with the consent of Cabinet, issue regulations

prescribing details for the implementation of this Act.

(2) The Regulations may provide for the payment of fees in connection with
applications for the registration of geographical indications and matters
related thereto.

Section 21 Protection of Geographical Indications Act 2002





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PART V - SPECIAL PROVISIONS CONCERNING MARKS
AND EXCEPTIONS

21 Misleading trademarks
The Registrar shall, ex officio 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 geographical
area indicated, if use of the indication in the trademark for such goods in Tonga
is of such a nature as to mislead the public as to the true place of origin.

22 Trademarks conflicting with a geographical indication for wines and
spirits
The registration of a trademark for wines which contains or consists of a
geographical indication identifying wines or of a trademark for spirits which
contains or consists of a geographical indication identifying spirits shall be
refused or invalidated by the Registrar ex officio or at the request of an
interested party, with respect to wines or spirits not having this origin.

23 Exceptions regarding prior users
(1) Nothing in this Act shall prevent continued and similar use in Tonga of a

particular geographical indication of another country identifying wines or
spirits in connection with goods or services by any nationals of Tonga or
persons domiciled in Tonga who have used that geographical indication in
a continuous manner with regard to the same or related goods or services
in the territory of Tonga either:
(a) for at least 10 years preceding 15 April 1994; or
(b) in good faith preceding that date.

(2) Where a trademark has been applied for or registered in good faith, or
where rights to a trademark have been acquired through use in good faith
either:
(a) before the date of entry into force of this Act; or
(b) before the geographical indication is protected in its country of

origin, this Act shall not prejudice the registration of or the validity
of the registration of a trademark, or the right to use a trademark, on
the basis that such a trademark is identical with, or similar to, a
geographical indication.

(3) Nothing in this Act shall apply in respect of a geographical indication of
any country with respect to goods or services for which the relevant

Protection of Geographical Indications Act 2002 Section 23





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indication is identical with the term customary in common language as the
common name for such goods or services in Tonga or in respect of a
geographical indication of any other country with respect to products of
the wine for which the relevant indication is identical with the customary
name of a grape variety existing in Tonga as of January 1, 1995.

(4) Any request for relief made under Part II 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 Tonga or after the date of registration of the trademark in
Tonga, 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 Tonga and provided that the geographical indication is
not used or registered in bad faith.

(5) This Act shall not 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.



Passed in the Legislative Assembly this 3rd day of September, 2002.