Geographical Indications Act No. 21 of 2003

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, Interpretation. "Court" means the High Court; "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. BARBUDA "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 No. 2 1of 2003. The Geogaphical Indications 3 ANTIGUA Act 2003. AND BARBUDA (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 ~ndlcahonsfor to paragraph (6) of section 4. wines. (2) The Registrar, in cases of permitted concurrent use of such indications, shall determine the practical conditionsunder 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.21 or LWJ. AND Act 2003. BARBUDA (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 reglstratlon. 8(2)and 9 and tbe Regulations. (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. BARBUDA (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 cancellationof 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 rectificationof 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 11. (3) The persons referred to in subsection (2) and m y other interestedperson 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 BARBUDA (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 translationor 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 appeals. this Act are to be referred to the Court. (2) Any decisiontaken by the Registrar under thisAct 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 inthis 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 connectionwith goods or servicesby any nationalor 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 rcghtedm 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 countryoforigin, No. 21 of 2003. The Geographical Indications 9 ANTIGUA Act 2003. AND BARBUDA (3) Nothing in this Act shall apply in respect of (a) a geographicalindication 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. matbersthatarercquiredor@#edby~Acttobe~~ or are necessary or convenient to be prescribedfor 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, M. Percival, Speaker. President. S. Walker, S. Walker, Clerk to the House of Representatives. 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 ]