Protection of Geographical Indications Regulations

2020 Revised Edition CAP. 17.12.01 Arrangement of Protection of Geographical Indications Regulations Sections PROTECTION OF GEOGRAPHICAL INDICATIONS C T REGULATIONS Arrangement of Sections Tu'utu'uni

1 Short Title .............................................................................................................. 5

2 Interpretation.......................................................................................................... 5

3 Fees ........................................................................................................................ 5

4 Forms ..................................................................................................................... 5

5 Language of documents ......................................................................................... 6

6 Signatures by partnership, companies and associations......................................... 6

7 Agent...................................................................................................................... 6

8 Application for registration .................................................................................... 6

9 Withdrawal............................................................................................................. 6

10 Marking application ............................................................................................... 6

11 Publication ............................................................................................................. 7

12 Opposition.............................................................................................................. 7

13 Registration ............................................................................................................ 8

14 Cancellation or rectification of registration ........................................................... 9

15 Misleading trademarks ........................................................................................... 9

16 Geographical indication for wines and spirit ......................................................... 9

17 Publication of invalidation ..................................................................................... 9 SCHEDULE I 11 FEES 11 SCHEDULE II 12 APPLICATION FOR REGISTRATION OF GEOGRAPHICAL INDICATION 12 to

2020 Revised Edition Page 3 Arrangement of Sections CAP. 17.12.01 Protection of Geographical Indications Regulations NOTICE OF OPPOSITION 14 CERTIFICATE OF REGISTRATION OF GEOGRAPHICAL INDICATION 16 REQUEST TO REFUSE OR INVALIDATE REGISTRATION OF MISLEADING MARK 17 REQUEST TO REFUSE OR INVALIDATE REGISTRATION OF A MARK CONFLICTING WITH A GEOGRAPHICAL INDICATION FOR WINES AND SPIRITS 20 to Page 4 2015 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE I C PROTECTION OF GEOGRAPHICAL INDICATIONS T REGULATIONS1 Made under section 20 of the Protection of Geographical Indications Act Commencement [8th December 2009]

1 Short Title These Regulations may be cited as the Protection of Geographical Indications Regulations.

2 Interpretation In the Regulations unless the context other requires: “Act” means the Protection of Geographical Indications Act 2002; and “Agent” means a Law Practitioner resident and having a place of business in the Kingdom representing the applicant.

3 Fees The fees to be paid in respect of matters arising under the Act or these Regulations shall be those specified in the Schedule I.

4 Forms The forms referred to in these Regulations are those set out in Schedule II. The Registrar shall furnish copies of the printed forms free of charge. to

2020 Revised Edition Page 5 SCHEDULE I CAP. 17.12.01 Protection of Geographical Indications Regulations

5 Language of documents Any document forming part of an application or submitted to the Registrar pursuant to the Act or these Regulations and which is in the Tongan language or any language other than English shall be accompanied by a translation into English.

6 Signatures by partnership, companies and associations A document purporting to be signed for or on behalf of a – partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any partner qualified to sign, stating that he sign on behalf of the partnership, or by any other person who satisfies the Registrar that he is authorized to sign the document; body corporate shall be signed by a director by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he is authorized to sign the document and shall bear the seal of the body corporate; or association of persons may be signed by any person who satisfies the Registrar that he is duly authorized. The Registrar may, whenever he deems in necessary, request evidence of authorization to sign.

7 Agent The appointment of an agent shall be by a power of attorney which shall be signed by the applicant or, if there are more than one, by each applicant. The power of attorney shall be filed together with the application.

8 Application for registration The applicant for the registration of a geographical indication shall be made in the form set out in Form 1 and accompanied by the prescribed fee.

9 Withdrawal The application may be withdrawn by written declaration submitted to the Registrar. The application fee shall not be refunded if the application is withdrawn.

10 Marking application The Registrar shall, upon receipt mark on each document making up the application, to Page 6 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE I the application number consisting of the letters TO, stroke, the letter GI, stroke, the last two digits of the year in which the initial papers were received, stroke, and a five-digit number allotted in the sequential order in which applications are received. The Registrar shall mark any corrections or other later field documents received on different dates, their actual date of receipt in the appropriate place in Form 1. The application number allotted under sub regulation (1) shall be quoted in all communications concerning the application.

11 Publication The Registrar shall notify an application whose application complete with section 11(1) of the Act, to pay the prescribed fee within one month from the date of notification. The Registrar shall publish the application once the prescribed fee is paid, and such publication shall set out the following: the geographical indication; 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; the name and address of the agent, if any; the address for service if an agent has not been appointed in accordance with Regulation 7; the demarcation of the geographical area to which the geographical indication applies; the goods for which the geographical indication is used; the quality, reputation or other characteristic of the goods for which the geographical indication is used, and any conditions under which the indication may be used; and the filing date and number of the application. If the prescribed fee referred to in sub regulation (2) is not paid within the time limit prescribed, the application shall be considered withdrawn.

12 Opposition A notice of opposition, under section 11(2)(b) of the Act, shall be given: within three months from the date of the publication in the form set out in Form 2. accompanied by the prescribed fee; and accompanied by supporting evidence if any. A counter-statement referred to in section 11(2)(c) of the Act shall be, subject to payment of the prescribed fees: to

2020 Revised Edition Page 7 SCHEDULE I CAP. 17.12.01 Protection of Geographical Indications Regulations submitted within two months from the date the applicant is notified of the opposition. in writing, stating the grounds upon which the applicant relies for his application; and accompanied by supporting evidence if any. A request for a hearing under section 11(2)(d) of the Act shall be made to the Registrar in writing at any time after the filing of the notice of opposition but no later than one month after the expiry of the prescribed period for filing the counter- statement. The Registrar shall give the parties at least one month’s written notice of the date set for the hearing, and each party shall, within that period, pay the prescribed fee for the hearing. Where the opponent or the applicant does not reside or carry on business in the Kingdom, the Registrar may require him to give security for the costs of the hearing for such amount as the Registrar thinks fit. The Registrar shall notify the parties in writing of his decision and his reasons. Where the Registrar decides to register the geographical indication, he shall require the applicant to pay the registration fee within one month of the notification of the decision.

13 Registration The Registrar shall register the geographical indication once the application pays the prescribed fee. The registration of the geographical indication shall include: the geographical indication registered; the demarcation of the geographical area to which the geographical indication applies; the name and address of the natural person or legal entity in whose name the indication is registered; the name and address of the agent, if any; the address for service if any agent has not been appointed in accordance with Regulation 7; the goods for which the geographical indication is used; the quality, reputation or other characteristic of the goods for which the geographical indication is used and any conditions under which the indication may be used; and the filing date and number of the application as well as the date of registration. to Page 8 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE I The publication of the reference to the registration for a geographical indication shall contain the particulars specifies in sub-regulation 2. The certificate of registration of the geographical indication shall be issued in the form set out in Form 3.

14 Cancellation or rectification of registration The publication referred to in section 13(2)(b) of the Act, shall: identify the geographical indication by setting out the particulars referred to in Regulation 13(2): identify the person or authority which has applied for the cancellation or rectification of the registration of the geographical indication by setting out the name and address of the person or authority and of the representative or agent, if any; and specify the period within which the persons having the right to use the geographical indication under section 12 of the Act may apply to join in the proceedings. The period to be specified by the Court under section 13(3) of the Act shall not be less than one month from the date of the notice or publication, as the case may be. Where the Court notifies the Registrar under section 13 of the Act, that a decision has been taken to cancel or rectify the registration of a geographical indication, the Registrar shall, as the case may be, cancel or rectify the registration.

15 Misleading trademarks A request under section 21 of the Act, to refuse or to invalidate the registration of a misleading trademark shall be made in the form set out in Form 4, and shall be accompanied by the prescribed fee. The procedure set out in Regulation 12 shall apply.

16 Geographical indication for wines and spirit A request under section 22 of the Act, to refuse or to invalidate the registration of a trademark which conflicts with a geographical indication for wines and spirits shall be made in the form set out in Form 5 and shall be accompanied by the prescribed fee. The procedure set out in Regulation 12 shall apply.

17 Publication of invalidation The Registrar shall record and publish a reference to the invalidation of the registration of a trademark pursuant to sections 21 and 22 of the Act. to

2020 Revised Edition Page 9 SCHEDULE I CAP. 17.12.01 Protection of Geographical Indications Regulations The publication of the reference to the invalidation of the registration of the trademark pursuant to section 21 of the Act shall include: the representation of the mark; the registration number of the mark; the name and address of the registered proprietor; the date of registration; the list of goods and services in respect of which the mark as registered with an indication of the corresponding class or classes of the International Classification; and an indication of the grounds on which the registration of the mark has been invalidated. to Page 10 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE I

SCHEDULE I FEES (Regulation 3) to 2020 Revised Edition Page 11 SCHEDULE II CAP. 17.12.01 Protection of Geographical Indications Regulations SCHEDULE II (Regulation 8 and 10(2)) APPLICATION FOR REGISTRATION OF GEOGRAPHICAL INDICATION to Page 12 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE II to 2020 Revised Edition Page 13 SCHEDULE II CAP. 17.12.01 Protection of Geographical Indications Regulations FORM 2 (Regulations 12(1)) NOTICE OF OPPOSITION to Page 14 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE II to 2020 Revised Edition Page 15 SCHEDULE II CAP. 17.12.01 Protection of Geographical Indications Regulations FORM 3 (Regulation 13(4)) CERTIFICATE OF REGISTRATION OF GEOGRAPHICAL INDICATION to Page 16 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE II FORM 4 REQUEST TO REFUSE OR INVALIDATE REGISTRATION OF MISLEADING MARK (Regulation 15(1)) to 2020 Revised Edition Page 17 SCHEDULE II CAP. 17.12.01 Protection of Geographical Indications Regulations to Page 18 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE II to 2020 Revised Edition Page 19

SCHEDULE II CAP. 17.12.01 Protection of Geographical Indications Regulations FORM 5 REQUEST TO REFUSE OR INVALIDATE REGISTRATION OF A MARK CONFLICTING WITH A GEOGRAPHICAL INDICATION FOR WINES AND SPIRITS (Regulation 16(1)) to Page 20 2020 Revised Edition Protection of Geographical Indications Regulations CAP. 17.12.01 SCHEDULE II ENDNOTES 1 GS 26/2009 to 2020 Revised Edition Page 21