PROJECT TITLE

CONFLICT OF GEOGRAPHICAL
INDICATIONS WITH TRADEMARK

SUBJECT
INTELLECTUAL PROPERTY LAW

SUBMITTED TO:
PROFESSOR ISHAN SIR

SUBMITTED BY:
AABID MQBOOL
ENROLMENT NO:2020-342-001
BALLB: 6TH SEMESTER
Abstract

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.
INTRODUCTION

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.

GEOGRAPHICAL INDICATIONS
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.

TRADEMARKS
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.

WAY FORWARD

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.

CONCLUSION
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.

BIBLOGROPHY

 https://www.scribd.com/document/443625579/Geographical-
indications-and-trademarks
 https://unacademy.com/content/bank-exam/study-material/
general-awareness/all-about-geographical-indication-and-how-it-is-
different-from-trademark/
 https://www.legalserviceindia.com/articles/td_gr.htm
 https://www.wipo.int/geo_indications/en/
faq_geographicalindications.html#:~:text=Geographical
%20indications%20(GIs)%20identify%20a,a%20fanciful%20or
%20arbitrary%20sign.