Introduction

Intellectual Property Rights (hereinafter referred to as IP rights) are vested in various intellectual properties, which are broadly understood as the creation of the human intellect or the mind. These rights were first recognized at a global level at the Paris Convention for the Protection of Industrial Property, 1883.[1] There was a growing two-fold need to acknowledge the protection of IP rights by way of legislation, these can be summarized as follows:

•To give statutory expression to the rights of creators and innovators in their creations and innovations, balanced against the public interest in accessing creations and innovations.

•To promote creativity and innovation, so contributing to economic and social development.

The various intellectual properties are usually categorized under two broad headers; Copyright and related rights and Industrial Property. While Copyright relates to literary and artistic creations and the rights emanating out of these authors’ rights, Industrial Property extends from patents and industrial designs to layout of integrated circuits to trademarks and geographical indications. The rationale behind these rights is to protect the products and services rendered by various producers and manufacturers. These rights help the producers convey information about their products to the end consumers to identify the original products. These rights also prohibit the other market players from using such signs which may mislead the consumers.

Article 1(3) 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.[2]

Geographical Indications and Trademarks belong to the genus of Industrial Property and are vested in individual products or even classes of products, which enjoy a goodwill in the market owing to the inherent quality it possesses due to its place of origin or manufacturer. These rights drive the sale of the products in the market and make them appealing to the customers.

The demand of the products is directly proportional to the quality it has, and by the virtue of Geographical Indications and Trademarks, the same can be ascertained easily by the end consumers.

In the instant essay, the researcher will discuss in brief the existence and application of Trademarks and Geographical Indications and the interface of the two.

Geographical Indications

Geographical Indications have been defined under Article 22 of the TRIPs Agreement as follows[3]

“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”.

Following the TRIPs agreement, the Indian Legislature came up with The Geographical Indications of Goods (Registration and Protection) Act, 1999. Geographical Indications have been defined under the said Act 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. [4]

Geographical Indications are Industrial Property marks or symbols which are allowed for goods and products manufactured in a certain geographical location, which are characterized by a certain quality, reputation or a feature essentially inherent to the said geographical location.

A geographical indication is available to all of the manufacturers of the said geographical location subject to any existing standard of production etc.

It serves an important socio-economic role, by appreciating the value of the GI product. The users of the GI are rewarded for building and protecting the goodwill in a certain product or class of products, and benefits the entire producer community of a certain territory, helping the financial upliftment, by recognizing their collective right and prohibiting others from infringing upon the same.

In India, an application for geographical can be made by any association of persons or producers or any organisation or authority established by or under any law for the time being 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 in writing to the Registrar.[5]

A GI can exist forever, as though it is initially granted for 10 years, it may be renewed from time to time[6] according to the provisions of the governing statute.

Trademarks

Trademarks are visible marks on products, meant to distinguish them from alike products and to help the consumers identify the makers of the product, which would help establish the goodwill of the manufacturer in the market. A trademark is a sign, or a combination of signs, that distinguishes the goods or services of one company from those of another.[7] While Trademarks were first discussed in the Paris Convention, the first formal definition of Trademarks is found in the TRIPs Agreement.

The Article 15.1[8] of the TRIPs agreement provides that-

“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”.

The definition ventures into the business aspect of trademarks and establishes that, a trademark should be capable of distinguishing the product from other similar products. The World Intellectual Property Organization, the administrative body under the Paris and the Bern convention, while deliberating on the distinctiveness of trademarks noted that it may either be inherent or acquired through use.[9]

However, the need of distinctiveness is a significant factor when the grant of a trademark is concerned, in absence of which registration may be refused. The Trademarks Act, 1999 provides for three absolute grounds in addition to other ancillary grounds for the refusal of trademarks, these are defined under section 9-[10]

S. 9 (1) The trademarks—–

(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 services;

(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.

It is pertinent here to mention that the absolute grounds of refusal are derived from the TRIPs agreement, and have been time and again deliberated upon by the INTA (International Trademark Association).

Another characteristic feature of Trademark is that it can be renewed from time to time according to provisions of the governing statute. In India, a trademark is originally granted for 10 years and can be renewed as per the provisions of the Trademarks Act, 1999.[11] This implies that a trademark can technically exist in perpetuity.

Interface of Geographical Indications with Trademarks

The Geographical Indications are very similar in its characteristics to Trademarks, which has often sparked a discussion on its interface with Trademarks, there are overlapping features and characteristics which have to be examined to cull out the various similarities and differences between GIs and Trademarks.

The similarities between GI and Trademarks can be summarized as follows:

  1. GI and Trademarks both belong to the genus of Industrial Property.
  2. The rights are available in rem (against the world at large), making it a negative right.
  3. The rights are available for perpetuity.
  4. These rights are essentially economic, and are intended at boosting the sale.
  5. These rights are based on the distinctiveness and quality of the product, and emanates from goodwill.

The differences between GI and Trademarks are summarized as follows:

S.No. Geographical Indications Trademarks
1.   Is characterized by a certain geographical place of origin. Is characterized by one particular
producing company/proprietor.
2.   Is a collective right available to every producer in the
territory.
Is an individual right available to
the producer.
3.   Can only be denoted by Geo-political names and symbols related to it. The trademark may be a letter, word, number or its combination, even odor or 3-D shape.
4.   Does not employ human creativity in its
nomenclature.
Essentially a work of human
creativity.
5.   Can only extend to goods. Can be extended to both goods and services.

Conclusion

The chances of conflicts are very high in cases of such similar rights, however, universally it has been dealt with in a rational manner, in the US, e.g. Trademark application for metal ‘magnolia’ was an obscure geographical name, so the court determined that if the primary significance of the marks to the relevant public was not geographic, it could be registered.[12]

In case of Marlboro cigarettes as well, the court observed-

By heavy advertising over time, when consumers hear or read Marlboro they think of the product (Cigarette) and not the place.  Thus, descriptive names acquire secondary meaning and become distinctive.

It has also been observed that certain geographical locations may not bar the applicants from seeking trademarks if they are totally distinct and the significance is arbitrary, e.g. Amazon.com can not be assumed to be run from Amazon rainforest.

A human application of judicial mind is expected in these situations which more often than not do not follow a set template and is successful in resolving conflicts.


[1] Understanding Industrial Property, https//:www.wipo.int, 8th August, 2018.

[2] Art. 1(3), Paris Convention on Industrial Property, 1883.

[3] Art. 22.1,TRIPs Agreement, 1994.

[4] S.2 (1)(e), The Geographical Indications Of Goods (Registration And Protection) Act, 1999.

[5] S.11(1) The Geographical Indication Of Goods (Registration And Protection) Act, 1999.

[6] S.18(1) The Geographical Indication Of Goods (Registration And Protection) Act, 1999.

[7] Supra at note 1

[8] Article 15, TRIPs Agreement, 1994.

[9] WIPO National Seminar on the Protection of Trademarks and Geographical Indications, Beirut, March 17 to 19, 2003, International Bureau of WIPO, p.4.

[10] S.9, The Trademarks Act, 1999.

[11] S.25, The Trademarks Act,1999.

[12] In Re Magnolia Metal Company’s Trade Marks (1897) 2ch 37 1 (CA).

This article has been authored by Anurag Shankar Prasad.