G.I. vs TM

 

Article 22-24 of TRIPS Agreement (as already discussed in previous blog in detail with examples of limited suspension of IP rights w.r.t to covid vaccines amidst Covid biowarfare) defines Geographical Indication (G.I.), Whereas, Article 15-21 elucidate about Trademark (TM) (again, as already explained in-depth upto how to globally handle in one of my previous blog). But what exactly is the difference between TM & G.I. & further, can TM be registered as G.I.? To differentiate it with G.I., here’ a small definition:

G.I. w.r.t. to goods means the goods, First produced or manufactured, which are further capable of being identified from the place of its origination, wherein, the said place could be a territory of a country or locality, where furthermore, the quality, reputation & goodwill of the produced or manufactured goods could be associated or referred to. Eg. Darjeeling Tea (indicating origination from Darjeeling region in India), Mysore Silk (indicating origination from Mysore district), Champagne (indicating Champagne region of France), Washington Apples (origin of goods referring to Washington state) etc. The Registered Proprietors of G.I. would always be Association of Persons or Producers or Manufacturers or Organization & never any Individual / Body Incorporate / Partnership / LLP / Society / Trust (subject to if any of these have established a well-known mark status w.r.t. any trademark indicating geographical origin via prolong user & goodwill). A G.I. only consists of the Logo or Name of the Region or Territory from where goods are originating, or at the most, both.

Whereas

Trademark can include anything, be it name, logo, device, tag line, package, label, word etc. which identifies only an Individual / Body Incorporate / Partnership / LLP / Society / Trust / Organization Without indicating or identifying the geographical territory or region of the origin of goods.

Q. So, how to become a User of G.I.?

A. There’re two Sections in the Register of G.I. maintained:

Part A – That incorporate only the particulars of registered G.I.s; &

Part B – That incorporate only the Authorized Users.

Thence, one can Apply in the Part B Section mentioning the corresponding G.I. registered, for which the individual or organization is intended to produce the goods indicating the origin of goods, but, producing or manufacturing exclusively within the vicinity of the same territory or region from where the G.I. corresponds to.

Q. Can a TM be accepted that indicate geographic origin?

A. Rarely, as under Sections alike 9 (1) (b) of absolute grounds of refusal of TM Act, it’s mentioned that if the goods indicate or designate the geographical origin, such prospective trademarks shall be refused; provided that if the said trademark has acquired a distinctive character through well-known status, then it must be proceeded for acceptance.

It's not easy to acquire registration of G.I. One must dissect the ancestral roots of the goods produced therein within that territory, the roots which might be traced back to even millennia; submit a map of that location; ancient / modern historical facts of the FIRST origination of goods therein; mode of regular Inspections for quality; natural & human factors of the region or territory from where the goods were produced; distinct method of production; international fame or goodwill achieved time down the line w.r.t. to those goods etc. This process is followed by every Applicant.

Normally, of course not always, Government Organizations/Agencies/Subsidiaries become the Proprietors of the G.I.s, whilst the interested entities become Authorized Users. 

G.I.s are valid for ten years, subject to recurring renewals post that.

The definitions, modus-operandi & prosecution of IP, almost remain same everywhere in the World due to agreements alike TRIPS/PCT/Madrid Protocol etc. :)

© Pranav Chaturvedi