Intellectual property rights (also known as IP rights) are granted to various intellectual properties, generally regarded as works produced by the human mind or brain. The Paris Convention for the Protection of Industrial Property, signed in 1883, marked the first time that these rights were acknowledged on a global scale. The numerous intellectual properties are often divided into two basic categories: industrial property and copyright and related rights. While industrial property encompasses everything from patents and industrial designs to trademarks and geographical indications, copyright relates to literary and creative creations and the rights deriving from these authors’ rights. These rights are justified by the need to safeguard the goods and services provided by different producers and manufacturers. These rights enable companies to inform consumers about their items and assist them in recognizing the original goods. These rights also forbid other market participants from using signs that can deceive customers.
Article 1 of the Paris Convention defines Industrial Property as Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour. Geographical Indications and Trademarks are vested in certain products or even classes of products that enjoy goodwill in the market due to the intrinsic quality it contains due to their location of origin or maker. They belong to the genus of Industrial Property. These rights promote the marketability of the products and increase consumer attractiveness.
Due to their conflicting and continuously expanding application in intellectual property, the relationship between geographical indicator tags and trademarks has always been rocky. Trademarks and protected GIs may get into many arguments over identical products with the same sign. The overlap over the same subject matter is a significant problem in utilizing these two IPRs. While GI tags are being used to identify a number of goods with a known geographic origin, trademarks are considerably helping consumers distinguish between comparable goods made by various manufacturers. With the expansion of global markets, instances of conflicting claims between the two parties are increasing, necessitating urgent and comprehensive reforms of the current methods for handling such disputes.
A geographical indication (GI) is a label placed on products that may be identified by their specific geographic origin and the unique characteristics and reputation of that location. To function as a GI, a sign must specify that a product is made in a particular place. The product’s origin should also be the main factor contributing to its qualities or reputation. Because the qualities rely on the production location, there is a clear connection between the product and its original place of manufacture. As a result, GIs not only enables companies to profit from the value of their geographically specific products, but they also inform and draw in customers thanks to the designation of a particular manufacturing place.
Article 22 of the TRIPS Agreement defined Geographical Indications as
“Geographical indications are, for the purpose of this agreement, 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”.
World Intellectual Property Rights Organization’s (WIPO’s) defined GI as
“A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place.
In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production”.
The Geographical Indications of Goods (Registration and Protection) Act 1999 was created by the Indian legislature in response to the TRIPs agreement. According to the aforementioned Act, geographic indications are defined as follows:
“geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.
In India, any association of individuals or producers, any organization or authority established by or under any law currently in force, representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods, may submit an application for geographical in writing to the Registrar. A GI may continue to exist indefinitely since, despite being initially granted for ten years, it may be periodically renewed in accordance with the rules of the applicable statute.
A trademark is any recognizable emblem, phrase, word, or symbol that identifies a particular good and legally sets it apart from all other products on the market. It is a sign that recognizes a company’s ownership of the brand and distinguishes a product explicitly as being its property. Trademarks aid in product differentiation among consumers and within the judicial and commercial systems. They are employed to recognize and safeguard words and design elements that specify the origin, proprietor, or creator of a good or service. These may include brand names for products, brand names, logos, or corporation slogans. Using a trademark deters unauthorized duplication of a company’s or person’s goods or services. Additionally, they forbid using marks with a significant likelihood of confusion with an already-existing mark. This suggests that a business cannot use a sign or brand name identical to or sounds close to one already registered, especially if the goods or services are connected. For instance, it would be illegal for a company that manufactures soft drinks to have a name or symbol that is too similar to Coca-Cola.
Article 15.1 of the TRIPS Agreement defines Trademark as
“Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark”.
World Intellectual Property Rights Organization’s (WIPO’s) defined GI
“A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights”.
The definition delves into the business use of trademarks and states that a trademark must be able to set a product apart from competing for comparable products. However, when it comes to the grant of a trademark, the requirement of distinctiveness is essential; otherwise, registration may be denied. In addition to various ancillary grounds, the Trademarks Act of 1999 stipulates three absolute grounds described in section 9 of the law.
- 9(1) The trade marks–
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
It is important to note that the INTA has repeatedly considered the absolute reasons for rejection, which are drawn from the TRIPs agreement (International Trademark Association). A trademark’s ability to be periodically renewed in accordance with governing statutory provisions is another distinguishing feature. A trademark in India is initially awarded for ten years and may be renewed in accordance with the Trademarks Act 1999. This suggests that a trademark has an endless lifespan.
Interface between Geographical Indication and Trademark
Geographical Indications and trademarks share many characteristics, which has frequently caused debate over how they interact. To distinguish the many parallels and distinctions between GIs and trademarks, it is necessary to look at overlapping traits and qualities. Trademarks and GI both fall under the umbrella of industrial property. It is a negative right because it can be used in rem (against the entire globe). The rights are unendingly accessible. These rights are commercial in nature and are meant to increase sales. These rights are derived from the goodwill and are based on the individuality and quality of the product.
Conflicts between Geographical Indication and Trademark
Disputes frequently emerge in an effort to protect products in the market by employing geographical indication tags and trademarks, two different types of distinguishing marks used on products. When many parties request permission to use a distinctive sign, disputes over who has the sole right to do so can arise. Systems are in place to prevent disputes between conflicting claims to the ownership of a trademark. According to the territoriality principle, similar trademarks used for the same goods or services can survive in various countries. However, the concept of territoriality has significantly weakened as a result of trade globalization and the growing prominence of new, borderless communication means, most notably the Internet, needing new solutions. The coexistence of identical trademarks is acceptable under the principle of specialty if they are applied to various products or services. According to the direction of priority, the first person or entity to use or register a particular trademark also receives the exclusive right to use it.
The international trademark regime has a strong intellectual and institutional foundation compared to other regimes. As a result, conflicts between a previous trademark registration and a future GI application are common, whether under a sui generis registration procedure or a trademark regime. One method for resolving these issues is the “first in time, first in right” idea. The expression serves as a succinct way to refer to the combined concepts of priority and exclusivity. The first protected sign, whether a trademark or a geographic indicator, is given priority (the concept of priority) and is not allowed to be used by anyone else (the principle of exclusivity) after that point. The two pillars of trademark law are these two principles.
The reasons for conflict between the GI and TM include
- the language in the TRIPS Agreement,
- the perspective of each functioning as a source identifier and
- the concept of ‘reputation’
Trade disputes might arise between GIs and trademarks because they are two different IPRs. The first is based on the group, whereas the second is based on the individual. But in crucial ways, they also accomplish the same goals—identifying the products’ origin for consumers and giving manufacturers exclusivity. Additionally, in the future, this will be very valuable. They serve as exclusivity rights, preventing non-privileged producers from unfairly using the GI or trademark to their detriment.
Consumers increasingly demand to know the commercial and geographic origin of products to make wise purchasing decisions. A clear trend among customers to purchase food and other commodities from a specific origin has resulted in a desire to purchase things with particular attributes. For such desired attributes, GIs act as guarantees. GIs will become increasingly important as consumer demand for specific foodstuffs and other items increases. However, the protection for GIs must be de jure condendo, transparent, dependable, efficient, and precise to fulfil their function in the global marketplace. It would be ideal if they had a registration method. If TRIPS Art. 23 were to be applied more broadly, producers could spend time, money, and effort on activities that would monitor their rights. As a result, the needs of consumers for high-quality items could be even better met.
In conclusion, geographical indication tags differentiate products based on specific geographic regions, whereas trademarks are used to differentiate products based on the company or enterprise they belong to. Conflicts over their use are inevitable, given that both are examples of intellectual property utilized to distinguish products and services on the market. Although various currently used ideas and techniques are being used to resolve such conflicts effectively, there is still much space for improvement. There is a requirement for both an expanded application of TRIPS Art 23 and an international system for the registration of geographical indications, as put out by the European Union. Such adjustments would improve brand recognition and demand for such products and open up new market opportunities for developing nations.
- What is intellectual property (IP)? (no date) WIPO. Available at: https://www.wipo.int/about-ip/en/
(Accessed: December 18, 2022).
- Paris Convention on Industrial Property, 1883, §1(3).
- TRIPs Agreement, 1994, § 22.1.
- Geographical indications (no date) What do they specify? Available at: https://www.wipo.int/geo_indications/en/ (Accessed: December 19, 2022).
- The Geographical Indications Of Goods (Registration And Protection) Act, 1999, §2 (1)(e).
- The Geographical Indication Of Goods (Registration And Protection) Act, 1999, §11(1).
- The Geographical Indication Of Goods (Registration And Protection) Act, 1999, §18(1).
- Trademarks. Available at: https://www.wipo.int/trademarks/en/#:~:text=What%20is%20a%20trademark%3F,protected%20by%20intellectual%20property%20rights. (Accessed: December 20, 2022).
- The Trademarks Act, 1999, §9.
- The Trademarks Act, 1999, §9.
- Loucks, Melissa A,Trademarks and Geographical Indications: Conflict or Coexistence?" (2012). Electronic Thesis and Dissertation Repository. 850.