Legal Service India - When Is A Trademark A Geographical Indicator and when It Is Not?
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When Is A Trademark A Geographical Indicator and when It Is Not?

B. Jyoti Kiran, IV year & Pallabi Ghosal, IV Year - National Law Institue University, Bhopal
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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 unauthorized 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.

The author can be reached at: jk.nliu@legalserviceindia.com / Print This Article

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