Can Geographical Indications be Registered as Trademarks?

Introduction

The intrinsic relationship between geographical indications (GIs) and trademarks reflects one of the most nuanced spaces of the discipline of intellectual property law. Since they both serve as distinctive signs that protect commercial interests, the fundamental question of whether geographical indications can be registered as trademarks requires careful examination of their distinct legal characteristics and regulatory frameworks.

The fundamental prohibition is that geographical indications cannot be registered as trademarks in their conventional sense. This prohibition stems from several critical legal principles enshrined in both domestic and international intellectual property law, such as section 25 of the Geographical Indications of Goods (Registration and Protection) Act, 1999, which explicitly renders void any trademark registration that incorporates a geographical indication, as such registration could mislead consumers regarding the genuine location of origin. For the same reason, the registrar of trademarks is prohibited from registering geographical indicators as trademarks because they could confuse people about the authentic place of origin.
Similarly, Section 9(1)(b) of the Trade Marks Act, 1999, prohibits the registration of marks that consist exclusively of indications that may serve in trade to designate the geographical origin of goods or services; it creates a clear barrier between geographical names that indicate origin and trademark protection.

The fundamental difference relating to the incompatibility between GIs and trademarks stems from their fundamentally different purposes and characteristics:

Ownership Structure
i) Ownership structure for instance, in the case of geographical indications, there are collective rights owned by groups, associations, or communities of producers from specific regions, but in the case of trademarks, there exist individual rights that are owned by specific individuals, businesses, or entities who have registered the mark.
ii) Aspect of transferability, i.e., in cases of GIs, they cannot be transferred to entities outside the specified geographical region, with protection remaining permanently with the regional community, whereas trademarks can be transferred, licensed, or sold to any entity anywhere in the world.

iii) Geographic connection: In cases of geographical indications, they are inherently linked to specific geographic areas, and only products from those regions can use the indication, but trademarks have no necessary connection to any geographical location and can be used globally.

Legal Precedents and Case Studies

The Himalaya Trademark Dispute

It is the landmark conflict between Tata Group’s Mount Everest Mineral Water Limited (MEMW) and Bisleri International providing crucial insight into this issue of whether GI's could be registered as trademark or not, herein, Tata Group's MEMW had registered “Himalaya” as a trademark in 1994, but Bisleri challenged this registration before the Intellectual Property Appellate Board (IPAB) arguing that “Himalaya” refers to a mountain range and cannot be registered as a trademark by any private party under the Geographical Indications Act and so was the opinion of IPAB which upheld this challenge in February 2011, ruling that no corporation could claim exclusive rights to use “Himalayan” as a trademark, emphasizing that the term should only be used for water sourced from the Himalayan mountains.

International Examples

Another landmark instance was the 'Champagne' geographical indication, which demonstrates robust protection mechanisms worldwide. For instance, in Europe, Champagne enjoys strong protection as a Protected Geographical Indication (PGI), with the Comité Interprofessionel du Vin de Champagne (CIVC) actively pursuing legal action against unauthorized use, which is with the support of the European Court of Justice's ruling that Champagne protection extends beyond identical products to services that might evoke the protected wine.

Exceptions

Despite the general prohibition, certain limited exceptions exist:
i) The prior registration rights, section 26 of the Geographical Indications Act, 1999, protect trademarks comprising geographical indications that were legitimately applied for or registered before the effective date of the Act; the clause preserves existing rights while preventing new registrations.

ii) The secondary meaning and distinctiveness, as geographical names may potentially be registered as trademarks if they have acquired distinctive character through extensive use or have become well-known in a secondary meaning unrelated to their geographical significance; however, this exception requires substantial evidence of distinctiveness and consumer recognition beyond the geographical meaning.

iii) The arbitrary or fanciful use Geographic names can be registered as trademarks when used in an arbitrary or fanciful manner that bears no relationship to the actual origin of goods or services; for example, “Antarctica” could potentially be trademarked for bananas since consumers would not perceive this as indicating the fruit’s actual origin.

iv) The collective and certification marks alternative: While GIs cannot be registered as conventional trademarks, they may be protected through collective marks or certification marks under trademark law. Such an approach allows geographical indications to receive trademark-like protection while maintaining their collective nature and geographic limitations.

An honorable mention is Japan, where there has been implementation of systems where geographical indications can be protected as modified forms of collective marks, providing a compromise solution that respects both the collective nature of GIs and the need for trademark-style protection in their jurisdiction.

The Policy Rationale

The prohibition against registering GIs as trademarks serves several important policy objectives:

i. Preventing monopolization is one important aspect to look out for, since allowing private entities to register geographical names as trademarks would effectively monopolize terms that should remain available to all legitimate producers from the relevant region.

ii. Preserving traditional knowledge is another important criterion to ensure because GIs protect traditional knowledge and cultural heritage by ensuring that geographic names associated with specific production methods and regional characteristics cannot be appropriated by individual entities.

iii. Consumer Protection, another crucial space to be ensured since prohibition prevents consumer confusion by maintaining clear distinctions between geographic origin (GIs) and commercial source (trademarks).

iv. Maintaining collective rights is a fundamental assurance, as GIs preserve the collective nature of regional production traditions, ensuring that all qualifying producers can benefit from the reputation associated with their geographic area.

International Legal Framework

The most fundamental framework internationally governing IP is the TRIPS Agreement. It provides the international foundation for this distinction of GIs and trademarks. It defines geographical indications in its Article 22 while maintaining separate provisions for trademarks. It also recognizes that GIs and trademarks serve different functions in the intellectual property ecosystem and should be governed by distinct legal principles. Furthermore, TRIPS, according to its article 24, specifically addresses the relationship between GIs and trademarks, establishing priority rules and exceptions that generally favor geographical indications over conflicting trademark rights when certain conditions are met.

Conclusion

The relationship between geographical indications and trademarks reflects a careful balance between collective regional rights and individual commercial interests, while the general rule is that there should be prohibition on registration of geographical indications as conventional trademarks with limited exceptions that exist for pre-existing rights, acquired distinctiveness, and arbitrary use, in context of the legal framework, there is prioritization of the collective nature of geographical indications and their role in protecting regional heritage and traditional knowledge, while providing alternative protection mechanisms through collective and certification marks, such a separation ensures that both forms of intellectual property can fulfil their distinct functions in protecting different aspects of commercial identity and regional authenticity.