Geographical Indications: Meaning, Difference and Homonymous Geographical Indications

What is a Geographical Indication?

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 Geographical Indications, 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.

Geographical Indications in action

From Switzerland’s Gruyère cheese to Mexico’s Tequila, geographical indications and appellations of origin are a common feature of everyday life. They not only provide a way for business to leverage the value of their geographically unique products, but also inform and attract consumers

Difference between Geographical Indications and Trade Marks

Scotch Whisky, BMW, Darjeeling Tea, and Adidas are a few names known to people all across the globe. A common man would quite easily associate these names with famous brands. However, if we take a closer look, we will observe that these names don’t belong to one category. BMW and Adidas are trademarks, while Scotch Whisky and Darjeeling Tea are geographical indicators. When it comes to trademarks and geographical indications (GIs), there has always been confusion in the minds of people. For a common man, both GI and trademark indicate the identity of the goods. So, where does the difference between the two terms lie? For having a better understanding of the same, let us first define a trademark and Geographical Indications.

As per Section 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, a geographical indication refers to an indication capable of identifying goods, including natural goods, agricultural goods, or manufactured goods, as manufactured or originating in a country’s territory, or a locality or region within that territory, where a specific quality, reputation, or any other attribute of such good is particularly a characteristic to its geographical origin. In the case of manufactured goods, one of the activities corresponding to the processing, production, or preparation of goods, should take place in the territory, region, or locality.

As per the Indian Trademarks Act 1999, a trademark is defined as a mark, which can be represented graphically and can distinguish the goods or services of one individual from those of others.

Without any second thoughts, these definitions can deceive, and at times get mixed up. Trademarks include the names of places as well for increasing brand awareness, reputation, or its advertising, which has, in turn, led to a lot of perplexities in the minds of the layman, for instance – Darjeeling Lounge of the ITC.

Let us now consider a few points that shall help us in differentiating between a trademark and Geographical Indications.

1. A trademark can be name, sign, or identity of a brand or business, which further differentiates the goods or services of one business entity from the others. A technology company is still a technology company; however, based on the manufacturer’s trademark, it can be well-distinguished. For instance, Microsoft and Apple are the Registered Trademarks of individual technology companies.
2. A Trademark Registration is usually filed by a single business entity or individual, whereas Geographical Indication Protection is granted to a group of manufacturers, who belong to a particular location, where the good was first originated.
3. Only a single person, business entity, or a manufacturer can use a registered trademark, while all the producers or manufacturers in the same locality or region are permitted to the use the same Geographical Indications.
4. A trademark can be a word, letter, numeral (or numerals), a combination of numerals and letters, hologram, sound, smell, an abbreviation, a name, or a device. However, Geographical Indications can only be names or symbols corresponding to a particular region or place.
5. A trademark is a result of human creativity or intellect, which further determines its uniqueness or distinctiveness. A trademark can be suggestive, arbitrary, or distinctive. On the other hand, Geographical Indications identify the goods based on their place of origin. Factors like climate, topography, human work (of a specific geographical location), amongst many others, determine the nature of the Geographical Indications.

The prime similarity (and the only one) between a trademark and a Geographical Indications is that both function as source indicators. The distinction between the two in this context again corresponds to the fact that a trademark identifies a service or good originating from a specific producer, while a Geographical Indication identifies the geographical location or region from where the good originates. As both these forms of Intellectual Property (IP) work as a tool for identifying a good or service, people often tend to get confused between a trademark and a Geographical Indications.

Concept of Authorized users

An authorized user is someone who is allowed to use someone else’s credit card. The person who owns the credit account is called the primary cardholder. The authorized user may be issued his own credit card with his name on it, but the account belongs to the primary cardholder.

The authorized user can make charges to an account, but cannot make changes — like increasing the credit limit or adding more authorized users. He isn’t required or expected to make payments on the credit card, regardless of how much he spends. Payments and changes are the responsibility of the primary cardholder.

A major incentive to being an authorized user is piggybacking off the primary cardholder’s good credit habits to increase his credit score. Many card issuers report credit activity to the credit bureaus for the authorized users, but some may not. The primary cardholder will need to ask her issuer if this information is reported in order for the authorized user to receive the benefits of good credit history.

The primary cardholder has to add an authorized user. This can be done by calling the credit card issuer or logging onto the online account. Many issuers will issue a second card for the authorized user, but it will generally be mailed to the primary cardholder, who can choose to give it to the authorized user or not. If the card isn’t distributed, the authorized user can either use the primary cardholder’s card, or simply reap the credit benefits of the cardholder’s good financial habits.

There may be a case that an authorized user may want to be removed from a card, or the primary cardholder wants to remove him. Perhaps your boyfriend is an authorized user on your account and you break up, or you’re the authorized user on a relative’s account and he passes away. Here’s how to remove someone/get removed as an authorized user:

Either the primary cardholder or authorized user can call the issuer to remove the authorized user from the account. The authorized user doesn’t generally have the right to make changes to the account, but he can remove himself from the equation if necessary.

 Homonymous Geographical Indications

The term homonym is defined in Merriam Webster’s Collegiate Dictionary (tenth edition) as “one of two or more words spelled and pronounced alike but different in meaning.” This definition describes accurately the problems created by the use of homonymous geographical indications, namely two or more identical geographical indications used to designate the geographical origin of products stemming from different countries.

Homonymous geographical indications are those indications that sound, spell or read alike. They are those geographical indications that are spelled and pronounced alike but which are different in meaning and which are used to designate the geographical origin of products stemming from different countries. The most frequent cases of homonymous geographical indications concern the names of regions which are located in different countries.

The problem or conflict generally arises when homonymous geographical indications are sold in the same market and is accentuated when such the geographical indications are for similar or identical products. Honest use of such geographical indications should be possible, because the indications designate the true geographical origin of the products for which they are indicated.

In principle, these indications should coexist, but such coexistence may be subject to certain conditions. For example, it may be required that they be used together only with additional information regarding the origin of the product in order to prevent consumers from being misled. A Geographical Indication may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product’s true origin.

LEGAL SCENARIO UNDER THE TRIPS AGGREEMENT

Article 23 of the TRIPS Agreement requires Members to make available additional protection, when compared to Article 22, for geographical indications for wines and spirits. The main difference between these two levels of protection is that, under Article 23, an interested party must have the legal means to prevent the use of a geographical indication for a wine which does not come from the geographical area indicated irrespective of whether or not such use misleads the public or constitutes unfair competition. The same goes for spirits. Thus, Article 23 is often referred to as an “absolute” form of protection since no such tests have to be satisfied in order to exercise it.

Article 23.3 of the TRIPS Agreement sets out a specific rule for homonymous geographical indications for wines by establishing that:

“In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.”

Indeed, Article 23.3 of the TRIPS Agreement specifically covers the cases of homonymous geographical indications for wines, whose use does not falsely represent to the public that the goods originate in another territory as provided in Article 22.4 of the TRIPS Agreement. In such cases, both indications must be protected and concerned WTO Members must determine the conditions necessary to differentiate homonymous indications for wines. In doing so, they must ensure that consumers are not misled and that the producers concerned are treated equitably.

The practical effect of this provision is that it prompts WTO Members to keep their markets open in cases of homonymous geographical indications and mandates that adequate solutions are found for the coexistence of products bearing such homonymous geographical indications.

Yet, this trade fostering solution is currently limited to wines, where it is clear that the same solution could benefit other products including spirits and certainly to all other products benefiting from geographical indication protection.

LEGAL SCENARIO IN INDIA

The Geographical Indication Act, which came into force, along with the Geographical Indication Rules, with effect from September 15, 2003, has been instrumental in the extension of Geographical Indication status to many goods so far.

In India, there are two conditions that should be taken into consideration before according protection to homonymousgeographical indications. The authority granting such protection to one geographical indication as against the other, where both of them are called as homonymous geographical indications as regard to each other, should grant protection only when it is satisfied of the following conditions:

1. The probability of being practically able to differentiate between the products with respect to such geographical indications in terms of the nature, quality, appearance, utility and overall look and feel of the product so that every possibility of consumer confusion is avoided.
2. Where such authority can ensure equitable treatment to producers/manufacturers of the two concerned products and protect the rights of such producers and manufacturers in the same manner through existing protection mechanism.¹

CONCLUSION

Conflicts regarding homonymous geographical indications typically arise where products on which homonymous geographical indications are used, are sold in the same market. The problem is accentuated where the homonymous geographical indications in question are used on identical products. The geographical indications designate the true geographical origin of the products on which they are used. However, concurrent use of homonymous geographical indications in the same territory may be problematic where the products on which a geographical indication is used have specific qualities and characteristics which are absent from the products on which the homonym of that geographical indication is used. In this case, the use of the homonymous geographical indication would be misleading, since expectations concerning the quality of the products on which the homonymous geographical indication is used are not met.

Therefore certain measures must be taken to ensure that homonymous geographical indications can co-exist harmoniously.

Author Details: Tejeshwar Pandey [Student; Symbiosis Law School, Nagpur]