Introduction
Imagine two things which are on sale in a shop, a box of tea named “Darjeeling Tea” and sports shoes that have a “swoosh” symbol. One of these things is a geographical indication (GI), and another one is a trademark. They are treated as different property rights in the Indian legal system, but the overlap between them is more frequent than people think.
Fundamental Differences
GI tags help indicate the origin of a product along with the specialties of the product that are related to the special geographic location from where the product originates. Trademarks, on the other hand, refer to source identifiers such as a name, logo, symbol, or word, which signifies the origin of the product or service. The GI is owned by the group of producers and is usually an association of people from the particular geographical region. In contrast, a trademark is a private right and thus, the owner of the trademark has the freedom to choose its users. That is why it can be assigned, licensed, or even sold but GI cannot be transferred beyond the group of producers.
Geographical Indication is applicable only to the products manufactured in a certain location and having certain features associated with it. Therefore, the geographical feature is a necessary condition for Geographical Indication, but such restriction is not applicable to trademark. The examples of Geographical Indications are basmati rice and channapatna toys, and the examples of trademarks are the bitten apple logo of the Apple company and McDonald’s.
Legal Overlap Between Geographical Indications and Trademarks
Theoretically speaking, there can never be any difficulty in determining the two kinds of rights. But the problem occurs if one considers the example of a word that may be considered as a part of both the groups. A geographical term may not only refer to the origin of the goods but may also stand for the reputation of the geographical location and be used as an indicator of the business firm. As per the provision made under Section 9(1)(b) of the Trade Marks Act, the use of signs and indications referring to the geographical origin of the goods and services for trading purposes is not allowed. But this provision in no way prevents the use of geographical indications as trademarks.
According to Section 25 of Trade marks act, the refusal or cancellation of a trademark which consists of or includes a GI will happen if the usage of the GI on goods different from those coming from the respective territory may cause confusion and misunderstanding regarding the geographic origin of the goods. It can be demonstrated using the case law of Darjeeling Lounge ( Tearefusal or cancellation of a trademark Board of India vs. ITC Ltd.) decided by the Calcutta High Court. In the above mentioned case, the Court examined the use of the term “Darjeeling” in relation to the hotel business as opposed to its use in relation to the production of tea. The important feature here is that the Geographical Indication protection in India does not necessarily preclude the usage of the term in all circumstances.
Darjeeling Lounge: Understanding the Territorial Limits of GI Protection
While Darjeeling Lounge highlights the shortcomings of GI, the Scotch Whisky Association (Scotch Whisky Association vs. J.K. Enterprises) in the Madhya Pradesh High Court represents its advantage. The case related to the enforcement, and it was clear from the court decision that the owner of the registered GI could bring the infringement claim without participation of the authorized users of the mark in the lawsuit.
It would be wrong, however, to view the two rights as antagonistic alone. On the contrary, many goods benefit from both and use them together successfully. A wine-producing enterprise having a protected appellation can introduce a name of its unique wine blend and a distinctive logo, while the appellation prevents abuse of the place name and the trademark stops other enterprises from creating similar names and logos.
Companies consider a name of a location to be free of charge and ignore the fact that Section 9(1)(b) of the Trade marks act states that a mark is capable of being refused legal protection if it is simply geographical, unless it has gained distinctiveness. Others try to register a GI that is already protected as a trademark, which is rejected if it could create a misleading impression about its origin or benefit from the GI’s reputation.
Conclusion
In essence, a clear labor division arises. A GI represents a community of producers and helps uphold the link between a product and its geographical origin, whereas a trademark is associated with a company and protects its image. The former is geographically focused while the latter one is not. Therefore, companies trying to build a brand using a geographical name should always check, whether the name is descriptive, does it have GI protection and whether it has any proven links to the goods or gives a hint of the quality, origin or reputation.
Author: Akshi Seem, Associate Partner and Divya Singh, Intern
FAQs
To whom does a GI belong? Can it be transferred or sold?
The GI belongs to a community of producers, generally an association from the region. Trademarks belong to the individual, and the owner decides whom he may use the trademark, and he may transfer his trademark by sale. A GI can never be transferred outside the community of producers.
Can a geographical name be protected as a trademark in India?
An exclusively geographical name could qualify for rejection of registration as per Section 9(1)(b) of the Trade Marks Act, except when the mark has acquired distinctiveness. This, however, does not mean that geographical indications cannot be registered as trademarks.
Why do GIs and trademarks overlap so often?
A geographical term can refer to the origin of goods, stand for the reputation of a place, and also be used as an indicator of a business. That is why one word can fall into both categories.
Can a GI be used on goods that come from outside the region?
No. A GI applies only to products manufactured in a certain location and having certain features associated with it. Under Section 25, a trademark that includes a GI can be refused or cancelled if its use on goods from a different territory may cause confusion about their geographic origin.
What common mistakes do businesses make with geographical names?
First, some organizations may think that the term indicating the place is free to use without realizing that the purely geographical sign cannot be registered and protected until it acquires distinctiveness. Second, an attempt to register the GI, which is already protected as a trademark, can be rejected if such action leads to misleading and taking advantage of the GI reputation.
