This article sheds light on the emergence of conflicts between geographical indication tags and trademarks with their rapidly increasing usage as forms of intellectual property rights. It explains the meaning and importance of GI tags and trademarks with the help of relevant examples to lay the foundation for discussion of the possible conflicts between them. It explores the types and causes of conflicts which arise between the two due to competing claims in the market .The article also highlights the existing approaches and mechanisms in place to deal with such conflicts. It also expounds and elaborates over the need for new and additional reforms and the importance of recommendations made by the European Union for ensuring better protection and implementation of these rights.
Key words: Geographical indication tags, trademarks, Sui generis systems, Agreement on Trade-Related Aspects of Intellectual Property Rights, free-riding, corrective labels.
The interconnection between geographical indication tags and trademarks has always proved to be tumultuous due to their rapidly increasing and conflicting use in the branch of intellectual property. Several disputes may arise between trademarks and protected GIs with respect to similar products carrying the same sign. This overlapping over the same subject matter is a common conundrum in the use of these two IPRs. While GI tags are being utilized to identify several products known for their geographical origin, trademarks are significantly contributing towards distinguishing between similar products from different manufacturing companies in the market. Instances of competing claims between the two are becoming more common with the growth of international markets and the present mechanisms to resolve such conflicts need urgent and collective reforms.
A geographical indication (GI) is a label that is applied to items that have a specific geographical origin and the traits and reputation they possess can be attributed to their place of or origin. A sign must identify a product as originating from a specific location in order to operate as a GI. Furthermore, the product’s features or reputation should be primarily owing to its origin. There is an evident link between the product and its original site of production because the attributes are dependent on the geographical location of production. Thus, GIs not only allow businesses to capitalize on the value of their geographically distinct products, but they also educate and attract customers due to the tag of a specific location of manufacture.
GI tags can be applied on a variety of items such as agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
A geographical indication tag can be protected in three major ways:
• the use of the sui generis systems (i.e., unique regimes for protection);
• the use of collective or certification marks;
• business practices-focused methods, such as administrative product approval procedures.
There are disparities in these methods when it comes to critical issues like the prerequisites for protection and their scope. Sui generis systems and collective or certification mark systems, on the other hand, share some common qualities, such as the fact that they establish rights for collective use by those who comply with stated requirements. In general, geographical indications are protected in different nations and regional systems using a number of ways, with many of the ways listed above being used in combination. These techniques were created in conformity with various legal traditions and within the context of unique historical and economic circumstances.
The right to a geographical indication tag allows those with the right to use the tag to prevent it from being used by a third party whose product does not meet the required standards of production. For instance- In areas where the Darjeeling geographical indication is protected, producers of Darjeeling tea can prohibit the use of the term “Darjeeling” for tea not cultivated in their tea gardens or not manufactured in accordance with the requirements set forth in the geographical indication’s code of practice.
At the same time, protected GI tag does not give the holder the right to restrict others from creating a product using the same processes as those specified by the applicable standards.
Some examples of famous GI products are: Parmesan Cheese and Parma Ham from Parma in Italy, Colombian Coffee from Colombia in South America and Mysore Silk from Mysore, India.
An identifiable insignia, phrase, word, or symbol that designates a certain product and legally distinguishes it from all other items of its sort in the market is referred to as a trademark. It is a symbol that uniquely identifies a product as belonging to a certain firm and acknowledges that business’s ownership of the brand. Trademarks help differentiate items not only inside the legal and business systems, but also among customers. They’re used to identify and protect phrases and design features that identify a product or service’s source, owner, or developer. These can be company logos, slogans, bands, or a product’s brand name. The use of a trademark prevents others from copying a company’s or individual’s products or services without permission. They also restrict the usage of any marks that have a high risk of being confused with one that already exists. This implies that a company can’t use a symbol or brand name that looks or sounds similar to, or has the same meaning as, one that’s already registered especially if the products or services are related. For instance- A soft drink manufacturing company will be legally restricted from using a name or symbol that appears too similar to that of Coca Cola.
Trademark protection can be obtained at the national/regional level by filing a registration application with the national/regional trademark office and paying the relevant fees. Two alternatives are available at the worldwide level: one can either file a trademark application with the trademark office of each country where protection is wanted, or use WIPO’s Madrid System. The registration, enforcement and infringement of trademarks in India is governed by the Trade Marks Act, 1999 under which one needs to file a manual or e- application for registration on payment of fees. If no opposition is raised to the name registered within ninety days, the certificate of registration will be received. Registration gives legal clarity and strengthens the rights holder’s position, for example, in the event of a lawsuit. The infringement of trademark is a cognizable offence in India which can result in criminal charges in addition to civil. The court may award remedies such as temporary injunction, permanent injunction, damages etc. The duration of a trademark registration varies, although it is typically ten years. It is possible to renew it indefinitely by paying additional fees. Some examples of famous trademarks are Apple, Nike, McDonalds and Bajaj.
CONFLICTS BETWEEN GI TAGS AND TRADEMARKS
Both geographical indication tags and trademarks are different forms of distinguishing marks used on products and thus it is common for conflicts to arise in the attempt to safeguard products in the market by making using of them. Conflicts over the right to exclusive use of a distinguishing sign can emerge when multiple parties claim the permission to their usage. There are a variety of systems in place to prevent conflicts between competing claims to a trademark’s right. The territoriality principle states that similar trademarks used for identical goods or services can coexist in different jurisdictions. However, trade globalization and the growing significance of new, borderless methods of communication, most importantly the Internet, have resulted in a considerable weakening of the notion of territoriality, necessitating new solutions. According to the principle of specialty, the co-existence of similar trademarks is permissible as long as these are used on different goods or services. The principle of priority advocates the rule that the first person or party who registers or makes use of a particular trademark will be the one that will attain the exclusive right to it.
The international trademark regime comparatively has a well-developed conceptual and institutional framework. As a result, whether under a sui generis registration method or a trademark regime, conflicts between a prior trademark registration and a future GI application are frequent. The principle of “first in time, first in right” has been proposed as a manner of addressing such conflicts. The phrase is a shorthand medium of referring to the principles of priority and exclusivity when they are combined. It means that the first protected sign, whether it’s a trademark or a geographical indication, takes precedence over (principle of priority) and prevents the use of (principle of exclusivity) any subsequent sign that conflicts. These two tenets are at the foundation of trademark law.
In order to avoid and address the occurrence of conflicts between trademarks and geographical indication tags, the following existing mechanisms are in practice:
As a common rule, it must be ensured that trademarks are not descriptive or deceptive in nature. As a result, trademarks that include or incorporate a geographical indication are not protected if their use would mislead consumers about the actual origin of the products on which they are used.
The laws protecting against unfair competition or passing off are formulated to give a remedy for illegal commercial conduct such as false or misleading allegations made in the course of business. A plaintiff in a passing off or unfair competition case against the unlawful use of a geographical indication must establish, among other things, that the use of the geographical indication is deceptive.
The use of collective or certification marks to protect products through geographical indication is regulated by applicable trademark legislations. Under trademark law, conflicts between contending trademark rights are settled using the priority principle.
Geographic indications are protected as sui generis rights under a system of appellations of origin or registered geographical indications. Different options are feasible depending on the applicable legal environment. They can range from granting registered geographical indications or protected appellations of origin precedence over competing trademarks to granting trademarks precedence over competing registered geographical indications or protected appellations of origin, with a possible middle ground of coexistence between conflicting rights.
A number of clauses of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) address the link between trademarks and geographical indications. Articles 22 and 23 provide the general protection criteria for geographical indications, including trademarks. Article 22.3 states “A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.” Article 23 of the agreement provides additional protection for geographical indications for wines and spirits.
The European Union, as a prime advocate of GI protection, is always working to improve the status quo level of protection. As a result, it has proposed additional adjustments to achieve this greater protection for GIs. The EU’s recommendations include proposal for the creation of an international register for GIs related to wines and spirits as well as requirements for the broadening of functionality of Art 23 of TRIPS to include all GI designated commodities. Furthermore, the EU developed a list of 41 GIs that are considered generic in countries outside of the EU and urged that they be given the protection they deserve. According to the EU, these GIs cannot be considered generic.
These amendments will ensure that all Geographical Indications (GIs) receive the more complex and sufficient protection that is currently only available to wine and spirits. As a result, there would be no chance of customer confusion, and producers would not face unfair competition from those who use corrective labels. Moreover, removing the ability to employ corrective labels will prevent unjustifiable free-riding of GI-labeled goods. This is seen as an important goal itself, as it makes it less likely that a GI will become generic due to overuse. Enhanced protection would also help developing countries since it would enable commodities produced in such countries to enter the markets of the developed countries more easily and efficiently.
Thus, a broader application of TRIPS Art 23 and an international registry for GIs are critical for goods from developing nations. The effectiveness of GI protection will be improved by expanding the applicability of TRIPS Art 23 and ensuring protection for the 41 GIs listed in the list. Negotiations on a multinational level are required to reach an agreement on GI protection that is acceptable to all parties and viable. The benefits of GIs will not be realized fully unless a universally agreed-upon, efficient, and acceptable protection structure is in place.
In a nutshell, geographical indication tags are used to distinguish among goods on the basis of specific geographical locations while trademarks are used to distinguish them on the basis of their concerned company or enterprise. Since both of these are forms of intellectual property which are used to identify goods and services in the market, conflicts are bound to emerge with respect to their use. While a myriad of existing mechanisms and principles are being employed to resolve such conflicts efficiently, they still leave ample room for improvement. As proposed by the European Union, there is a need for an international system for the registration of geographical indications as well as an extended applicability of TRIPS Art 23. Implementing such changes will not only help upgrade the reputation and demand of such products, but at the same time pave the way for developing countries in expanding their market.
NAME– SHUBHANGI SINGH
INSTITUTION– NATIONAL LAW UNIVERSITY ODISHA
YEAR– FIRST YEAR, BA.LLB