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Introduction:
Coca
cola, Peugeot, Marlboro, and Citibank; Cognac, Pislen, Tequila,
and Champagne.
To a layman all these are
brands of consumer goods and services
that have become very famous over the years because of their
quality, uniqueness, styling and lot many other factors. But in
the realm of Intellectual Property Rights these names have been
categorized into two distinct categories, one that of
trademarks
and one that of
geographical
indications.
While the first set of 4 names distinguish products or services
and/or their producer, manufacturer, or provider and the next set
distinguish the geographical origin of a given product.
Both set of
names can acquire a high reputation and commercial value and may
also be exposed to misappropriation, counterfeiting or misuse. So
are the two categories similar? Or are there differences between
the two that have resulted in such demarcation?
Yes! There are
differences between trademarks and geographical indications. And
to understand that we have to first look at what exactly do these
terms mean.
Trade mark is
defined conventionally as a distinctive sign of some kind, whether
that sign comprises a name, word, phrase, logo, symbol, design,
picture, styling or a combination of one or more of these
elements. A trademark is used by a business to identify itself and
its products or services to consumers, and to set itself and its
products or services apart from other businesses.
The essential
function of a trademark is to uniquely identify the commercial
source or origin of products or services, such that a trademark,
properly called, is used to 'indicate source' or act as a 'badge
of origin'. The use of a trademark in this way is known as
'trademark use' and a trademark owner seeks to enforce its rights
or interests in a trademark by preventing unauthorised trademark
use. Though the term
Geographical
indication
has been
defined by many in many ways , section 22(1) of the TRIPS defines
Geographical Indications as:
"...
indications which identify a good as originating in the territory
of a Member, 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."
However
definitions can be deceptive and are often used interchangeably.
There are
trademarks that use the name of a particular
geographical place to make the name sound fanciful and more
alluring that adds to the name, more grandeur.
So where exactly is the point where a friction arises between the
two that necessitates such a demarcation? Or to put it in a
slightly different manner what is the area where both Trademarks
and Geographical Indicators overlap and where do they segregate.
When is a Trademark a Geographical Indicator and when it is not?
The main
difference between a trademark and a geographical indication is as
follows:
1. Trademark is a sign that a business concern
(whether
physical or moral person)
uses to distinguish its own goods or services from those of
competitors and GIs is an indicator that certain products have a
regional origin, which is certain. A geographical indication tells
consumers that a product is produced in a certain place and has
certain characteristics that are due to that place of production.
All producers who make their products in the place designated by a
geographical indication and whose products share typical qualities
may use it. Unauthorized parties may not use protected
geographical indications that are likely to mislead the public as
to the true origin of the product.
2. The concept
of geographical indication also encompasses "appellations
of origin"
used on products that have a specific quality that is exclusively
or essentially due to the geographical environment in which the
products are produced. In contrast, trademarks are often
distinguished as being used by an enterprise to distinguish its
goods and services from those of other enterprises. A GI is a kind
of "collective mark" of the farmers and craftsmen of a region.
Unlike a GI, a trademark can be sold and de-localized
3. A trademark
is an individual right, while a GI is accessible to any producer
of the locality or region concerned. All the producers in that
region are allowed to use the geographical indication. For
instance, "Mountain" can be used by all honey farmers in the
Cameroon Mountain area but if any of the producers has registered
the trademark "XTRA" for its honey, only that producer can call
its produce "XTRA" Mountain Honey.
4. While only
one undertaking can use a trademark registered in its name and
address, every undertaking in the same region are allowed to use
the same geographical indication.
5. While a
trademark can be a letter, a word, numerals or simply a number, or
a combination of letter(s) and numbers, an abbreviation, a name, a
device or figurative element, a hologram, a sound or a smell, a
geographical indication can only be a politico-geographical names
and symbols related to places.
6. Behind the
development of a trademark, human creativity is involved. Human
creativity is capable of creating an original and novel sign or
expression which permits a certain product or service to be
distinguished from similar products or services. On the other
hand, a geographical indication is an expression that identifies
geographically the product origin. A geographical indication is
linked to topography, human work, climate or other factors,
independently from human creativity. Consequently, whereas
trademarks put emphasis on the producer of a product, a
geographical indication underlines the geographical origin of a
product and some derived characteristics.
7. While a
trademark can claim its colour features, a geographical indication
would not claim any such thing.
8. While a
deceptive geographical indication can be incorporated in a
trademark and render the trademark deceptive, the reverse is not
practical in that a deceptive trademark cannot implicate a
geographical indication in the same way if the geographical
indication is not in itself deceptive.
Geographical
Indications are similar to trademarks in that they function as
source indicators. However, the key distinction lies in the fact
that while a trademark identifies a good or service as originating
from a particular producer, a geographical indication identifies
not the producer of the good concerned, but the geographical
region from where the product originates.
But even then
the overlap between the two can take place in many cases. So who
will supersede the other.
Which of the
two will take precedence if there happens to be some confusion
To give one greater rights over the other will not be fair play .
So a need arises to classify the two and treat them separately in
law so that one does not encroach upon the other.
It thus came
up with the following solution: Trademarks are protected against
any confusingly similar sign for similar or identical goods or
services. Trademarks are protected against
likelihood of
confusion.
This is due to the fact that trademarks still serve in the first
place as an identifier of the manufacturer of a certain product.
If the use of a similar sign gives rise to a likelihood of
confusion as to the manufacturer of the product, the trademark
owner may enjoin such use.
Geographical
indications for products other than wine and spirits are protected
against use of the designations which misleads the public as to
the geographical origin of the good. This is an important
difference. The registration and the use of a trademark on grounds
of a conflicting geographical indication protected for products
other than wine and spirits, cannot be enjoined on grounds of a
likelihood of
confusion
or
risk of
misleading
between the trademark and the geographical indication. In order to
refuse a trademark application or invalidate a registered
trademark, it must be proven that the consumers are actually
misled as to the geographical origin of the product at issue.
This field
being a very new field in the regime of IPR has still to grow and
develop. There arise cases where such confusions arise ,some
decisions are given arbitrarily and some with caution.
Differentiating between the two and demarcating their respective
areas is a very difficult task and it is only with time that this
problem will be solved.
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When Is A Trademark A Geographical Indicator
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The
author can be reached at: jk.nliu@legalserviceindia.com /
