Protection of Geographical Indications Act (No. 13 of 1999)

1. Short title.

2. Interpretation. PART II PROTEcnON OF GEOGRAPHICAL INDICATIONS

3. Protection regardless of registration. 4. .Homonymous geographical indications.

5. Exclusion from protection. PART III REGISTRATION OF GEOGRAPHICAL INDICATIONS

6. Applications.

7. Contents of application.

8. Examination of application. .9. Opposition to registration.

10. Registration of geographical indication.

11. Right of use.

12. Invalidation or rectification of registration.

13. Proceedings for unlawful use of geographical indications. PART IV SPECIAL PROVISIONS CONCERNING MARKS; EXCEPTIONS .

14. Misleading marks.

15. Marks conflicting with a geographical indication for wines and spirits.

16. Exceptions regarding prior users. .166 1999 GEOGRAPHICAL INDICATIONS ACT 13 PART V GENERALPROVISIONS SECTION

17. Registrar.

18. Register.

19. Corteetion of errors. :to. Extension of time for applications.'

21. Exercise of discretionary powers.

22. Jurisdictionof Court.

23. Offences;

24. Regulatiolls. 2$. Commencement. • 1999 GEOGRAPHICAL INDICAnONS ACT 13 167 COMMONWEALTH OF DOMINICA ACf No 13 OF 1999 I asent V.L.SHAW President 26th November, 1999 AN ACf TO PROVIDE FOR THE PROTECTION OF GEO" GRAPHICAL INDICATIONS AND FOR MAlTERS RELATED THERETO (Gazetted 2nd December,I999) BE IT ENACfED by the Parliament of the Commonwealth of Dominica as follows: PART I PRELIMINARY

1. This Act may be cited as the - Shon tiUe. PROTECfION OFGEOGRAPHICALINDICATIONSACf 1999.

2. In this Act, unless the context otherwise requires - Interpretation. "Court" means the High Court; "geographical indication" means an indication which identifies any goods 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 goods is essentially attributable to their geo- graphical origin; • " 168 GEOGRAPHICAL INDICATIONS ACT 13 "goods" means any natural or agricultural product or any product of , handicraft or industry; "Journal" means the Journal of Intellectual Property created under ActNo;8ofl999. section 5(d) of the Patents Act, 1999; "Minister" means the Minister responsible for geographical indica- tions; "Paris Convention" means the Paris Convention for the Protection of Industrial Property of March 20, 11183, as last revised; "producer" means - (i) the producer of any agricultural product or any other person exploiting natural products; (ii) the manufacturer of any product of handicraft or Industry; or (iii) any trader dealing in the said products; "Register" means the Register ofGeographical Indications referred to in section 18; and "Registrar" means the. Registrar of Companies and Intellectual Property. PART 11 PROTECf10N OF GEOGRAPHICAL INDICATIONS Protection 3. Protection under this Act shall be available - ",pldl... of ",gjslJation. (a) regardless of whether or not a geographical indication has been registered provided, however, that the registration of a geographical indication underPart 11I ofthis Act shall, in any proceedings under this Act, raise II 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. 1999 GEOGRAPHICAL INDICATIONS ACT 13 169

4. (1) In the case of homonymous geographical indications for Homonyn\Ous . wines, protection shall he accorded to each indication subject to indications for section 3 (b). wines. (2) The Registrar shall, in the case of permitted concurrent use of such indications, determine the practical conditions under which the homonymous indications in question Will be differenti- ated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled. S. The following shall not be protected as geographical indica- Exclusion from lions ~ protection. (a) indications which are not geographical indications as defined in section 2; (b) indications which are contrary to public order or morality; and. (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. PART III REGISTRATION OF GEOGRAPHICAL INDICATIONS

6. The following persons may file an application with the Application. Registrar in the prescribed form for the registration of a geographi- cal indication - - . (a) any person or group of persons carrying on an activity a as producer in the geographical area specified in the application, with respect to the goods specified in the application; (b) any group of consumers; or (c) any competent authority.

7. (1) The application shall specify - Contents of . (a) the name, address and nationality, of the person AppliClition. filing the application, and the capacity in which the applicant is applying for registration; . " 170 1999 GEOG~lIICAL INDICATIONS·ACT 13 (b) the geographicalindication for which registration is sought; (c) the geographical area to which the geographical indication applies; (d) the goods to which the geographical indication applies; and . • (e) the quality, reputation or other characteristic ofthe goods for which thegeographical indication is used. (2) The application shall be accompanied by the prescribed application fee. : &ominItion 8. (1) The Registrar shall examine the application to determine > ohpplication. whether it complies with the requirementsof sections 5(b), 6 and 7 and the Regulations . pertaining thereto. , (2) Where the Registrar finds that the requirements referred to insubseetion (I )hereof are fulfilled, he shall accept the application and cause it, as accepted, to be published in the Journal in the prescrtbedmanner. , Opposition .10 9. (I) Any·interested Person or competent authority may, within regjstration; the prescribed period and in the prescribed manner, give notice to the Registrar of opposition to the registration of the geographical indication on the ground that one or more of the requirements of sections 5(b), 6 and 7 are not fulfilled. (2) The Registrar shall send a copy of such notice to the applicant, and, within the prescribed period and in the prescribed manner, the applicant shall file, with the Registrar, a counter- statement of the grounds on which he relies for his application. (3) The applicant shall, ifhe does not file a counter - statement, be deemed to have abandoned the application. (4) Where the applicant files a counter-statement, the Regis- trar shall furnish a copy thereof to the person giving notice of opposition and, after hearing the parties, if they wish to be heard, and considering the merits of the case, shall decide whether the geographical indication should be registered. 1999 GEOGRAPHICAL INDICATIONS ACT 13 '171

10. (1) Where the Registrar finds that the requirements referred to Regi~lrati"" ot in sections 5(b), 6 and 7 are fulfilled, and - geographlcal . indication. (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 opposition has been decided in ' the applicant's favour, he shall register the geographical indication, publish a reference to the registrationin the Journal, and issue to the applicant a certificate of registration. ' (2) Where the requirements for registration have not been fulfilled. the Registrar shall refuse the application.

11. Only producers carrying on their activity in the geographical RighI of U~. area specified in the Register shall have the right 10 use a registered geographical indication, in the course of trade, with respect to the products specified in Ihe Register. provided that such products possess the quality, reputation-or other characteristic specified in the Register.

12. (1) The Court may, on the application of any interested person - Invalidation or rectification (a) invalidate the registration of a geographical indica of regislration. tion on the ground that the geographical indication is excluded from protection under section 5; or (b) rectify the registration of a geographical indication on the ground that the geographical area specified in the registration does not correspond to the geographi- . cal indication, or that the indication of the products for ,,!hich the geographical indication isused or the . indication of the quality, reputation or other charac- teristic of such products is missing or unsatisfactory. . (2) In any proceedings under this section - (a) the person referred to in subsection (1) shall serve notice of the application for invalidation or rectifica- " 172 .1999 GEOGRAPHICAL INDICATIONS ACT 13 lion on tbe person wbo filed tbe application for registration of !be geographical indication or his successor in title; and (b) the Registrar sball, by publishing in tbe Joumaltbe application for invalidation or rectification, give notice to all persons 'having tbe right to use tbe geographical indication under section 11. • (3) The persons refen:ed to in subsection (2) and any other , interested person may, witbin a period wbicb sball be specified in tbe said notice and publication, apply to join in tbe proceedings; ·~ngsf(;r 13; Any interested person or interested group of persons may ....1awfU1 use iristitule proceedings in tbe Court to prevent; in respect of any olpographiall geograpbical indication- . iJldiQI~ . (af the use of any means in the designation or presenta- tion of any goods which indicates or suggests that the goods in question originate in a geographical area- other than the true place of origin in a manner which misleads the public as tothegeographical origin of the goods; . (b) any usewhicb constitutes an act of unfair eompeti- tion within the meaning of Article lObis of the Paris .Convention; or (c) the use ofa geographical indication identifying wines for wines not originating in the place indicated by the "geograpbical indication in question, or identifying spirits for spirits not originating in the place indicated by tbe geograpbical indication in question, even where tbetrue origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions s,pcb as "kind", "type", "style", "imitation" or tbe Iike~ . (2) In proceedings under tbis section, the Courtmay, in addition to issuing an injunction, award damages and grant any other civil " remedy or relief as it shall consider appropriate. / 1999 GEOGRAPHICAL INDICATIONS ACT 13 li3 ,,' PARTN, SPECIALPROVISIONS <;ONCERNING MARKS; EXCEPTIONS

14. The _. shalI, ex officio or at the . Registrar. request of any inter- Mi~leadingmarks. ested party, refuse or invalidate the registration of a trademark which contains or consists ofa geographical indication with respect to goods not originating in the territory indicated, if use ofthe indication in the trademark for SUch goods.in Dominica is of such a nature as to mislead the public as to the true place of origin of such goods.' . IS. The registration of a trademark for wines which contains or Marks conflicting consists of a, geographical indication identifying wines, or of a wil~ a ~!l"'ph;' tra d emark • ror . . w hiIC h contains or consists spmts . 0 f a geograp . hical d soi .for rca cal. indicatlon indjcaiion identifying . spirits shall be refused ' . or invalidated by the wme an spmts, ., Registrar, exofficio or on the application ofaninterested party, with respect 10 such wines or spirits not having this origin.

16. (1) Nothing in this Act shall prevent the continued and similar Exceptions use, in Dominica, of a particular geographical indication of another regarding prior country identifying wines or spirits in connection with goods or users. services by any national or domiciliary of Dominica who has used .that geographical indication continuously with regard to the same or related goods or services in the territory of Dominica - (a) for atleastten years preceding the IS" of 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 - . (a) before the date of entry into force of thisAct;or (b) before the geographical indication is protected in its country of origin, this Act shall not prejudice the registrability of, or the validity of, the registration of a trademark, or the right to use a trademark, on the basisthat such a trademark is identical to, or similar to, a geographi- cal indication. ·, 174 1999 GEOGRAPHICAL INDICATIONS ACT 13 (3) Nothing in this Act shall apply in respect ofa geographical indicationofany country with respect to goods or services for which the relevant indication is identical to the term customary in common language lIS the common name for such goods or services in Dominica, or in respect of a geographical indication of any other country with respect to products of the vine for which the relevant indication is identical to the customary name of a grape variety • existing in Dominica as of the 1" of January i 1995. , (4) Any application for relief made under Part III ofthis Act in connection with the use or registration of a trademark shall be made. within five years after the unlawful use of the protected indication has become generally 'known in Dominica.or after the , : date of registration of the trademark in Dominica, provided that the trademark has been published by that date, if such date is earlier than the daie on which the unlawful use became generally known in Dominica and providedfurther 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, Ihat person's name or the'name of that ,. person's predecessor in business, except where such name is used in such a manner asto mislead the public. PART V .: GENERAL PROVISIONS Registrar. 17. The Registrar shall perform the functions and exercise the powers conferred on him by Ihis Act and any other enactment. Regisier. 18. (1) The Registrar shall maintain a Register of Geographical Indications in which he shall record ~II mailers required by this Act or the Regulations to be recorded.' (2) Any person may, upon payment ofthe prescribed fees, and in accordance with the prescribed conditions, consult, inspect or make a copy of, or obtain an extract from the Register. (3) The Register shall be prima facie evidence of anything requi~ or authorised hy this Act to be registered,and shaIl be admissible and sufficient evidence of lIny such thing. 1999 GEOGRAPHICAL·INDICATIONS ACT!3 175 (4) A certificatepurporting to be signed by the Registrarand certifyingthat any entrywhich he is authorisedto makeby this Act hasor has notbeen done,Shall be I!tuita facie evidence,and shall be admissible and sufficient evidence of the matters so certified. (5) Each of the following, that is to say a copy of - (a) an entry in the Register or an extract from tlie Registerwhich is supplied under subsection (2); (b) anydocumentkeptin the CompaniesandIntellec- tual Property Office, or an extract from. any such document,orany matterwhichhasbeenpublished under this Act, whichis a certifiedcopy or a cernned extract shall be admitted in evidence without production of the original, and such evidence shall be sufficient evidence of the matters stated therein. (6) In this section, "certified copy" and "certified extract" means a copy or extract certified by the Registrarand sealed with his seal.

19. (1)Tbe Registrarmay,of his own volitionor uponthe written cOO.cn(lll of requestof any.person, correct any clerical error or error of transla- errors, lionortranscriptionin anyapplicationfiled underthisAct, orin any documentfiled in pursuanceof such application, and the Registrar may also correct any clerical error in the Register. (2) Subsection(1) shall not be construed as giving the Regis- trar the power to correct in the Register, any application or docu- ment in a materialway.

20. (1) Where the Registrar is satisfied that the circumstances Extension of time justify it, he may, upon receiving the written request of any for applications. interestedperson,and uponsuch terms as he maydirect,extend the timefor doingany actor takingany proceedingunderthisActor the Regulations, and shall give written notice to the parties Concerned. 176 1999 GEOGRAPHICAL INDICATIONS ACT 13 (2) The extension may be granted even though the time for doing the act or taking the proceeding has expired. , Exerciseof 21. The Registrar shall give any party to a proceeding before him Uiscretionary the opportunity of being heard before exercising any discretionary powers. power vested in him by this Act if the exercise tbereofmight adversely affect that party. Jurisdiction of ' 22. (1) The High Court sbllll have jurisdiction in cases of dispute Court. relating to the application of this Act and the Regulations and in matters which, under this Act, may be.brought before it. (2) Any person who is aggrieved by a decision ofthe Registrar under this Act may, within two months of that decision, appeal to the Court. Offences. 23." (I) Any person Who knowingly performs any act referred to iii section 13 commits an offence and is liable to a fine of not less than fifteen thousand dollars but not more than forty thousand dollars, orto imprisonment for a term of not less than five years but not more than twelve years, or to both such fine and such imprison- ment. (2) Any person who, knowing the same to be false - (a) makes or causes to be made a false entry in the Register; (b) makes or causes to be made any document falsely purporting to be a copy of an entry in the Register; or" (c) produces, tenders or causes to be produced in evidence any such entry or copy thereof, commits an offence and is liable to a fine of not less than ten thousand dollars, but not more than thirty thousand dollars, or to imprisonment for a term of not less than three years, but not more than ten years, or to both such fine and such imprisonment, Regulations. 24. The Minister may make Regulations providing for any matter which is to be prescribed under thisAci, or for giving effecttothe purposes of this Act. 1999 GEOGRAPIUCAL INDlCAnONS ACT 13 177

25. (I) This Act shall come into .force on such day as the Minister . Commencement. may, by Order published in the Gazette, 'appoint. Passed in the House of Assembly this 9th day of September, 1999. RUTII SIMON (MRS) Clerk ofthe House ofAssembly (Ag). DOMINICA Printed by the Government Printer at the Government Printery, Roseau (Price $2.60) "