UNTI 4

Provisions Relating to Prior Users under the Trade Marks Act, 1999 and the Geographical
Indications Act

1. Protection of Prior Registered or Applied Trade Marks (Section 26(1))

Under Section 26(1), prior users of a trade mark that contains or consists of a geographical indication
(GI) are granted protection if they satisfy the following conditions:

 Good Faith Registration or Use: A trade mark that has been applied for or registered in good
faith under the trade mark laws in force at the time or a trade mark for which rights have
been acquired through use in good faith is protected.

o Good Faith Registration: This means the trade mark was applied for or registered
without any intent to deceive or cause confusion about the origin of the goods.

o Good Faith Use: The trade mark was used before the registration of the GI in a
manner that did not mislead consumers or infringe upon any pre-existing GI rights.

 Time of Protection: The protection is granted if the application for the trade mark was made:

o Before the commencement of the relevant legislation (in this case, the
Geographical Indications Act, 2003), or

o Before the date of filing the application for registration of the geographical
indication under this Act.

 Protection Granted: If the above conditions are met, nothing in the Geographical Indications
Act will affect the validity of the trade mark or the ability of the user to continue using the
trade mark. This means the trade mark will not be invalidated on the grounds that it is
identical or similar to a geographical indication.

This provision safeguards the rights of prior users who have invested in and built recognition for their
trade marks in good faith before a GI was registered.

2. Geographical Indications as Common Names (Section 26(2))

Section 26(2) provides an exception for trade marks containing geographical indications that have
become customary terms in the common language:

 Customary Use Before 1995: If a geographical indication is identical to a term that was used
commonly in India as the name of the goods, and this use was in place before January 1,
1995, then the trade mark is not affected by the registration of the GI.

o For example, if a term commonly referred to a product (like "Champagne" or

"Cognac" for certain types of goods) and was already a common name for the
product in India before 1995, it would not be invalidated by the registration of the
geographical indication related to that name.

 Impact on Trade Marks: Trade marks that used such common names for goods before 1995
would not be subject to claims of infringement due to the subsequent registration of the GI.
This provision ensures that terms which were already in common use and had become generic
names for products cannot be monopolized through geographical indications after the date specified
(January 1, 1995).

3. Protection of Personal Names (Section 26(3))

Section 26(3) safeguards the right to use personal names in business, even if such a name overlaps
with a geographical indication:

 Use of Personal Names: A person has the right to use their own name or the name of their
predecessor in business in the course of trade.

 No Confusion or Misleading: This right is protected unless the use of the name causes
confusion or misleads the public about the origin of the goods.

o For instance, if a trade mark uses the name of an individual or their predecessor but
it does not suggest that the goods originate from a geographical region associated
with a GI, the individual can continue using the name.

 Context: This provision ensures that the use of personal names in trade marks is not
restricted merely because the name might coincide with a geographical indication, provided
it does not mislead or confuse the consumer regarding the origin of the product.

4. Limitation on Action After 5 Years (Section 26(4))

Section 26(4) introduces a statute of limitations to bring actions related to the use or registration of
a trade mark that infringes a geographical indication:

 Time Limit: No legal action in connection with the use or registration of a trade mark can be
initiated after five years have passed from the earliest of the following two events:

o Infringement Becomes Known: The geographical indication registered under this Act
becomes known to the registered proprietor or authorized user, and they are aware
of the infringement by the trade mark.

o Registration of the Trade Mark: The date on which the trade mark itself was
registered under the Trade Marks Act, 1999, provided that the trade mark was
published in accordance with the rules of the Trade Marks Act before the
geographical indication became known to the proprietor or authorized user.

 Protection Against Retroactive Claims: This provision prevents claims from being made long
after the fact and offers security to prior users who have used or registered their trade marks
for a significant period without a challenge. The five-year period provides a reasonable
timeframe within which a party must assert their rights, thus limiting potential retroactive
challenges.

 Bad Faith Exception: This limitation does not apply if the trade mark has been used or
registered in bad faith.

This section provides legal certainty by preventing claims based on historical use of geographical
indications after a substantial time has passed, thus promoting stability in trade mark registrations
and usage.
Summary of Key Provisions Regarding Prior Users:

1. Protection of Good Faith Users: Trade marks applied for or registered in good faith before
the registration of a geographical indication are protected. The trade mark’s registration
remains valid, and its use is not affected by the subsequent GI registration.

2. Customary Names: If a geographical indication is a common name for goods in India as of

January 1, 1995, trade marks using such names are not invalidated by the GI.

3. Personal Name Use: Individuals can use their own names or the names of their
predecessors in business, even if these names are similar to a geographical indication, as
long as there is no confusion or misrepresentation about the origin of the goods.

4. Statute of Limitations: No action can be brought against a trade mark for infringing a
geographical indication after five years from when the infringement was known or when the
trade mark was registered, whichever is earlier.

These provisions aim to balance the protection of geographical indications with the rights of trade
mark owners who have used their marks in good faith before a geographical indication was
registered. They ensure that prior users are not unfairly affected by the GI registration process,
fostering fairness and stability in trade mark law.

Analyse the necessity for separate legislation for protection of Geographical indication which offers
the same protection as that of trademark

Intro: The protection of Geographical Indications (GIs) has become increasingly important in the
modern era due to the growing significance of products that are associated with specific
geographical regions. While GIs offer similar protections as trademarks, they serve a distinct purpose
and raise unique concerns, justifying the need for separate legislation dedicated to their protection.
Below is a detailed, structured analysis of the necessity for separate legislation for the protection of
GIs, which provides protection comparable to that of trademarks:

1. Understanding Geographical Indications and Trademarks

Geographical Indication (GI):

A Geographical Indication refers to a sign or indication that identifies goods as originating from a
specific territory, region, or locality, where a particular quality, reputation, or characteristic of the
goods is essentially attributable to its geographical origin. Examples of GIs include:

 Darjeeling Tea (from Darjeeling, India)

 Parmigiano Reggiano (from Parma, Italy)

 Champagne (from the Champagne region, France)

Trademark:

A Trademark is a distinctive sign or symbol used by a business to identify and distinguish its products
or services from those of others. It is generally associated with a specific company or individual and
serves to protect the brand identity of the holder.

Key Differences:
  Ownership: Trademarks are owned by a specific individual, business, or legal entity. In
contrast, GIs are collective rights that are associated with a community of producers or
artisans in a specific region.

 Purpose: The purpose of a trademark is to distinguish goods or services in the marketplace,

typically to signal the source of the goods. A GI, on the other hand, reflects the specific
geographical origin of the goods and the unique characteristics or qualities that are linked to
that origin.

 Duration and Transferability: Trademarks are generally renewable and transferable, whereas
GIs are non-transferable and last as long as the goods maintain their specific regional
characteristics.

2. Reasons for Separate Legislation for Geographical Indications

A. Different Purpose and Nature of Protection

 Distinct Characteristics of GIs: Unlike trademarks, which aim to protect the interests of
individual businesses or entities, GIs serve a public good by promoting collective interests of
producers from a particular region. GIs protect the collective reputation and traditional
knowledge of a community or locality. A single business cannot "own" a GI because it
represents the interests of a broader community of producers.

 Cultural and Heritage Protection: GIs often reflect the cultural, historical, and artisanal
heritage of a region. Their protection helps preserve traditional methods of production,
craftsmanship, and the environment of the region, which is often tied to the unique qualities
of the product. Trademarks do not offer such broad cultural protection because they are
solely focused on brand identity and market differentiation.

B. Collective Nature of GIs vs. Individual Nature of Trademarks

 Collective Ownership: GIs are collective signs that are used by a group of producers or
farmers. They represent a shared reputation that has been built over generations within a
specific locality. Separate legislation ensures that the collective nature of GIs is adequately
protected, with mechanisms in place to ensure that the GI benefits all members of the
community.

 Regulation of Use: GIs require a regulatory framework that governs the use of the indication
and establishes the criteria for inclusion (such as geographical boundaries, production
methods, and quality control). This is different from the protection of trademarks, which
focuses on preventing misuse by third parties or competitors and ensuring the
distinctiveness of a single source.

C. Consumer Protection and Public Confidence

 Consumer Trust: GIs protect consumers by ensuring that the products they buy are truly
from the region they claim to be from and possess the unique qualities associated with that
region. This helps prevent misleading claims or deceptive practices. For example, a GI for
Champagne ensures that only sparkling wine from the Champagne region of France can be
labeled as such, protecting consumers from imitations.
  Market Transparency: GIs provide consumers with more transparent information about the
quality, origin, and authenticity of products. Trademarks alone may not provide this level of
transparency because they are associated with an individual producer, not the origin or the
collective reputation of the product.

D. Protection from Misuse and Misleading Claims

 Preventing False Claims: GIs are crucial in preventing unauthorized use of geographical
names or terms. For example, without protection, a product labeled as "Kashmir Shawl" may
be made elsewhere, misleading consumers and unfairly competing with authentic producers
from Kashmir. A separate GI law ensures that only those meeting strict criteria for
authenticity and origin are permitted to use the GI.

 Legal Recourse for Abuse: GIs need legal provisions to prevent misuse, counterfeiting, or
unauthorized use of the indication by non-authorized entities. While trademarks can also
provide protection against misuse, GIs require specific rules to prevent geographic
misappropriation and safeguard the interests of a community.

3. Global Trade and International Protection of GIs

 Compliance with International Agreements: Various international trade agreements,

notably the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights), have
specific provisions for the protection of GIs. To comply with these agreements, nations must
provide specialized legal frameworks for GIs, separate from trademarks. This ensures that GIs
are recognized internationally and protected under global trade rules.

 Global Recognition: Many countries, particularly those in Europe, have robust systems for
protecting GIs, and having separate legislation allows a country to meet international
obligations and secure the GI status of its local products in foreign markets. For example,
European Union regulations for GIs ensure that products like Roquefort cheese and Feta
cheese are protected in all EU member states.

4. Challenges and Benefits of Separate GI Legislation

A. Challenges

 Complexity of Implementation: Establishing a separate legal framework for GIs can be

complex, particularly in terms of defining the criteria for GI protection, ensuring geographical
boundaries, and setting up mechanisms for controlling misuse.

 Enforcement: The enforcement of GI protection can be challenging, especially when there

are widespread imitations or fraudulent use of the GI. However, with a dedicated legal
framework, enforcement can be more organized and systematic.

 Costs and Resources: The process of registering and maintaining a GI system requires
resources for quality control, certification, and monitoring. This can place a financial burden
on government agencies and producer communities, especially in developing countries.

B. Benefits
  Cultural and Economic Growth: The protection of GIs can lead to economic growth for rural
or traditional communities by allowing them to preserve their identity and enhance their
marketability. Additionally, it can boost exports of culturally significant products.

 Distinct Protection Mechanism: Separate GI legislation provides a tailored system that

addresses the specific nature and needs of geographical indications, ensuring that their
protection is more effective than if they were merely subsumed under general trademark
law.

 Recognition and International Trade: A dedicated legal framework enhances the global
recognition of GIs and helps countries defend their local products on the international stage.
It promotes fair trade and sustainable development for regions reliant on traditional crafts
and products.

5. Characteristics:

Geographical indications are valuable property to producers from particular geographical regions.
Geographical indications - (a) are based on traditions; (b) They reward traditions and allow for
continued evolution; (c) They are not freely transferable from one owner to another. (d) They
emphasise the relationship between traditions, culture, human efforts, resources, and environment
of particular regions. Hence, they have to be protected.

6. Functions:

Functions of Geographical Indications They basically perform three functions. Firstly, they identify
goods as originating in a particular territory, Secondly, they suggest the quality, reputation or other
characteristic of the goods attributable to their geographic origin; and Thirdly, they promote the
goods of producers of a particular area.

Conclusion

The necessity for separate legislation for the protection of Geographical Indications (GIs) arises from
their unique characteristics and distinct role in safeguarding not only the interests of producers but
also the cultural heritage, reputation, and quality associated with a specific region. By providing
specialized protection, separate GI legislation serves to enhance market credibility, prevent
exploitation, and ensure that the benefits of the GI system are equitably distributed among the local
producers and communities. Therefore, the establishment of separate GI laws is not just a necessity
—it is essential for the sustainable growth and preservation of geographical indications in the global
marketplace.

Position of Geographical Indications (GIs) under the TRIPS Agreement

The TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) is a comprehensive

international legal framework negotiated under the World Trade Organization (WTO) that sets down
minimum standards for the protection and enforcement of intellectual property rights (IPR) across its
member countries. The Agreement deals with various areas of intellectual property, including
patents, copyrights, trademarks, and geographical indications (GIs).

Under the TRIPS Agreement, geographical indications are given special attention due to their
importance in international trade, particularly in relation to food products, beverages, and traditional
goods that carry distinctive qualities tied to their place of origin. The protection of GIs under TRIPS
aims to prevent misleading or unfair use of geographic terms and ensure fair competition for
products that are associated with a specific geographical region.
Geographical Indications (GIs) under the TRIPS Agreement

1. Definition of Geographical Indications (Article 22)

The TRIPS Agreement defines a Geographical Indication (GI) under Article 22, which is crucial for
establishing the scope and protections available under the agreement. According to Article 22(1):

 A Geographical Indication is a sign used on goods that have a specific geographical origin
and possess qualities, reputation, or characteristics inherent to that location. The key
elements for determining whether a term qualifies as a GI are:

o Geographical Origin: The product must originate from a specific geographical region.

o Qualities or Characteristics Linked to the Region: The product must have qualities,
reputation, or characteristics that are closely connected to that region’s
environment, culture, or production methods.

Example: "Champagne" refers specifically to sparkling wine produced in the Champagne region of
France, where the unique terroir (soil, climate, and traditional production methods) contributes to
the product’s distinctiveness.

2. Protection Against Misuse or Misleading Use (Article 22)

One of the primary goals of the TRIPS Agreement concerning GIs is to prevent the misuse of
geographical indications and protect consumers from being misled about the true origin of goods.

Article 22(2): Protection Against Misleading Use

 Misleading Use: TRIPS mandates that WTO members must provide legal means to prevent
the use of a geographical indication that misleads the public about the true origin of the
goods. This includes preventing the use of a GI term on goods that do not originate from the
stated region or do not have the qualities or characteristics associated with that region.

o For example, a product labeled as "Parmesan cheese" produced outside the Parma
region in Italy would be considered a violation of the GI protection if it misleads
consumers into thinking it’s from Parma, where authentic Parmesan is made.

Unfair Competition: TRIPS also allows protection against the use of GIs that could constitute unfair
competition or create confusion in the marketplace. This protection is particularly crucial for
preventing deceptive marketing practices where producers outside the GI region attempt to profit
from the established reputation of a product.

3. Special Protection for Wines and Spirits (Article 23)

While Article 22 provides protection against misleading use of all GIs, Article 23 offers special
protection for GIs relating to wines and spirits, recognizing their significant role in international
trade.

Article 23(1): Enhanced Protection for Wines and Spirits

 Wines and Spirits: Countries are required to provide enhanced protection for geographical
indications identifying wines and spirits. This enhanced protection goes beyond preventing
misleading use and includes prohibiting the use of a GI on products that are not originating
from the relevant geographical region, even if the use does not mislead consumers.
For instance, the term “Champagne” can only be used for sparkling wine produced in the
Champagne region of France. No product made outside this region, even if it does not mislead, is
allowed to use this term.

Article 23(2): Exemption for Existing Uses

 Existing Use: Article 23 also acknowledges that in some cases, there may be existing use of a
GI term in commerce, especially if the term has become generic or customary in certain
markets. However, such exemptions are carefully regulated, ensuring they do not undermine
the protection of genuine GIs.

4. International Registration and Protection of GIs (Article 24)

Article 24 of the TRIPS Agreement acknowledges that existing international systems for protecting
GIs may be utilized, specifically mentioning the Lisbon Agreement for the protection of appellations
of origin. However, it also allows WTO members to establish their own systems for the protection of
GIs, provided those systems meet the minimum standards of protection under TRIPS.

 Existing International Systems: For GIs relating to wines and spirits, the Lisbon Agreement
offers an international registry for GIs. Member countries of the Lisbon Agreement can
register their GIs with the World Intellectual Property Organization (WIPO), providing
international recognition and protection.

 Domestic Systems: The TRIPS Agreement allows countries to adopt national systems for the
registration of GIs, which could involve specific certification marks or collective marks.

 Protection in Other Countries: GIs protected in one country or region are often subject to
recognition and protection in other jurisdictions, particularly through bilateral agreements or
through compliance with international norms set forth by TRIPS.

5. Exceptions to GI Protection (Article 24)

While the TRIPS Agreement provides strong protection for GIs, there are specific exceptions to that
protection under Article 24:

Article 24(1): Generic Terms

 A geographical indication may lose its protective status if it becomes a generic term in
commerce. This generally applies to cases where a geographical name has become
commonly used to refer to a type of product rather than its origin.

o Example: The term "bordeaux" used for wines may lose its GI status in some
jurisdictions if it becomes used as a general term for a style of wine, not necessarily
from Bordeaux.

Article 24(4): Pre-existing Uses

 If there are pre-existing uses of a GI term, countries may grant exceptions to protect prior
legitimate uses. This exception is important to balance the protection of traditional products
and the rights of producers who have used the name in a way that doesn’t mislead
consumers.

6. Dispute Resolution and Enforcement

Enforcement of GI Rights:
  Article 41 of the TRIPS Agreement establishes that member countries should provide
effective enforcement measures to prevent violations of IPR, including GIs. This includes legal
provisions to take action against infringement and to seek remedies through the judicial
system.

 Disputes regarding GIs can be resolved under the WTO dispute settlement system, which
provides a mechanism for member countries to bring complaints against other members
that fail to meet their obligations under TRIPS.

Technical Assistance:

 Article 67 of the TRIPS Agreement encourages developed countries to provide technical

assistance to developing countries to help them implement TRIPS provisions, including those
concerning the protection of GIs. This is especially relevant for countries seeking to protect
their local products and GIs but may lack the legal infrastructure to do so effectively.

7. Issues and Challenges in GI Protection under TRIPS

A. Conflicting Interests:

 There are conflicting interests between developed and developing countries regarding the
scope of GI protection. Developed countries often seek broader protection for wines and
spirits, while developing countries may advocate for the recognition and protection of
traditional knowledge and agricultural products linked to GIs.

B. Implementation and Compliance:

 The successful implementation of GI protection under TRIPS can be challenging for countries
with limited resources. Ensuring that GIs are registered, monitored, and protected requires
administrative infrastructure and consistent enforcement, which may be lacking in certain
countries.

C. The Use of GIs for Non-Agricultural Products:

 There is ongoing debate about whether GIs should extend to non-agricultural products (such
as handicrafts). While TRIPS primarily focuses on agricultural goods, expanding GI protection
to include other sectors is a growing consideration in international trade discussions.

8. Conclusion

The TRIPS Agreement recognizes the unique role of Geographical Indications (GIs) in protecting the
reputation, quality, and authenticity of goods associated with specific regions. By providing a robust
framework for the protection of GIs, particularly in relation to wines and spirits, the agreement aims
to prevent misleading practices, protect consumers, and ensure fair trade. The enhanced protection
of GIs under TRIPS—especially for wines and spirits—acknowledges their economic, cultural, and
social significance in international markets.

Although the protection of GIs under TRIPS has encountered challenges, including debates over the
scope of protection and implementation in developing countries, the framework serves as a
foundation for global recognition of GIs, ensuring that products with unique regional characteristics
are safeguarded from misuse or misappropriation.
Differentiation Between Trademarks and Geographical Indications (GIs)

While trademarks and geographical indications (GIs) are both intellectual property rights used to
protect certain features of products in the marketplace, they serve different purposes, are governed
by different legal frameworks, and protect distinct elements of products. Below is a detailed
differentiation between trademarks and GIs:

1. Definition

Trademark:

 A trademark is a distinctive sign, symbol, logo, word, or combination of these used by a

business to identify and distinguish its goods or services from those of others in the
marketplace. It serves as a source indicator for consumers to identify the brand of a product
or service.

o Example: The Nike Swoosh logo for athletic shoes and apparel, or the word "Coca-
Cola" for beverages.

Geographical Indication (GI):

 A geographical indication is a sign or symbol used on goods that originate from a specific
geographical region and possess qualities, reputation, or characteristics inherent to that
region. A GI identifies the product as originating from a particular area where the qualities or
characteristics are linked to the region's natural or human factors.

o Example: Darjeeling Tea (originating from the Darjeeling region in India),

Champagne (sparkling wine from the Champagne region of France), or Parmigiano
Reggiano cheese (from Parma, Italy).

2. Ownership and Protection

Trademark:

 Ownership: A trademark is owned by an individual, company, or legal entity that registers or

uses the mark to distinguish their goods or services. The rights are typically exclusive to the
trademark holder.

 Protection: The protection of trademarks is based on the first-to-use or first-to-file system,

depending on the jurisdiction. The trademark owner has the right to prevent others from
using a similar mark that could cause confusion among consumers regarding the origin of the
goods or services.

Geographical Indication (GI):

 Ownership: A GI is typically not owned by a single individual or company. Instead, it is owned

collectively by a community of producers, farmers, or artisans in a specific region. The
protection is for the collective use of the term or symbol by all authorized producers within
the defined geographical area.

 Protection: Protection for GIs is usually tied to the geographical origin of the goods. It is
intended to preserve the connection between the product and its traditional origin. In some
cases, a GI organization or a certification body may be responsible for managing and
controlling its use.
3. Purpose and Scope

Trademark:

 Purpose: The primary purpose of a trademark is to distinguish the goods or services of one
business from those of others, ensuring that consumers can identify the source of a product
or service. Trademarks focus on protecting the brand identity of a specific company.

 Scope: Trademarks are used for all kinds of goods and services. The scope of a trademark is
primarily limited to the goods or services for which it is registered, and its protection is based
on distinctiveness and consumer recognition.

Geographical Indication (GI):

 Purpose: The purpose of a geographical indication is to protect the reputation or quality

associated with goods that originate from a specific region. GIs ensure that only products
originating from a designated region can use the name or symbol, and the product’s qualities
are linked to the region’s natural or cultural factors.

 Scope: GIs are restricted to particular regions and are used for goods that possess specific
qualities or characteristics tied to the region of origin. The scope of a GI is focused on
regional identity rather than individual branding or commercial competition.

4. Rights and Exclusivity

Trademark:

 Exclusivity: Trademarks grant exclusive rights to the trademark holder to use the mark in
connection with specific goods or services. The owner has the right to prevent others from
using identical or confusingly similar marks within the same industry or class of
goods/services.

 Transferability: Trademarks are generally transferable and can be bought, sold, or licensed to
others.

Geographical Indication (GI):

 Exclusivity: GIs do not provide exclusive rights to a single producer. Instead, the GI is used
collectively by producers or manufacturers from the defined geographical area, and it cannot
be used by those outside the region or by producers who do not meet the standards set for
the GI.

 Transferability: GIs are not transferable to non-authorized producers. The rights to use a GI
are typically tied to specific standards of production, and the name can only be used by
producers within the designated region who comply with those standards.

5. Criteria for Registration

Trademark:

 Distinctiveness: For a trademark to be registered, it must be distinctive and capable of

identifying the goods or services of the owner. The mark must not be generic, descriptive, or
deceptive.
  Registration Process: The process generally involves filing an application with the relevant
trademark authority, and the mark is assessed for distinctiveness and potential conflicts with
existing trademarks.

Geographical Indication (GI):

 Geographical Link: To register a GI, the product must have a clear connection to its
geographical origin, and its quality, reputation, or characteristics must be linked to that
region. There may also be additional requirements related to traditional methods of
production.

 Registration Process: The process typically involves an application by a recognized authority

(such as a GI organization or regulatory body) that certifies the link between the product and
its geographic origin. The product must adhere to certain standards to maintain the GI.

6. Duration of Protection

Trademark:

 Duration: The protection for a trademark can be renewed indefinitely, usually in 10-year
intervals, as long as the mark is in use and maintains its distinctiveness.

Geographical Indication (GI):

 Duration: GIs do not expire as long as the product continues to meet the criteria and
standards set for the specific geographical area. The protection is continuous as long as the
product’s link to the region remains intact and the goods meet the established quality or
reputation.

7. Example of Use

Trademark:

 Example: Apple is a trademark for the technology company that manufactures phones,
computers, and other electronic goods. The trademark protects the brand identity of the
company and its products in the marketplace.

Geographical Indication (GI):

 Example: Swiss Watch is a geographical indication. Only watches manufactured in

Switzerland, which meet specific criteria regarding craftsmanship and quality, can use the
term Swiss Watch to indicate their origin.

8. Enforcement

Trademark:

 Enforcement: Trademark owners can enforce their rights against infringement through legal
action, including lawsuits for damages and injunctions to stop the use of confusingly similar
marks. Enforcement of trademark rights typically takes place through the judicial system.

Geographical Indication (GI):

 Enforcement: Enforcement of GIs typically involves collective action by the producers or an

authorized GI organization that oversees the use of the GI. Legal action can be taken against
individuals or businesses that use a GI without authorization or engage in deceptive
 practices. In some cases, GIs are enforced through regulatory bodies or governmental
agencies.

Conclusion

While both trademarks and geographical indications (GIs) serve as valuable intellectual property
tools for protecting goods in the marketplace, their purposes, scope of protection, and the entities
responsible for their use differ significantly. Trademarks are primarily focused on individual brand
identity and exclusivity, while GIs protect the collective interests of a community or region by
ensuring that the quality and reputation of goods tied to a specific geographic area are preserved.
Understanding these differences is essential for businesses, consumers, and legal professionals to
navigate the complexities of intellectual property protection in a globalized marketplace.

Misleading Use of Geographical Indications (GIs)

The misleading use of Geographical Indications (GIs) refers to situations where a geographical term
or sign is used in such a way that it causes confusion or misleads consumers about the true origin,
quality, or characteristics of a product. This is a key issue because GIs are designed to protect the
reputation and authenticity of products that are associated with a particular region. When a GI is
used misleadingly, it can harm consumers by causing them to make purchases based on false or
incorrect assumptions, and it can also harm the producers of genuine products who may lose market
share due to this deceptive practice.

1. What Constitutes Misleading Use of GIs?

A. False Indication of Geographical Origin

 When a product that does not originate from a specific geographical region uses the name
or symbol of a GI, it misleads consumers into believing that the product comes from that
particular region.

o Example: The use of the term "Champagne" to describe sparkling wine produced
outside the Champagne region of France is misleading because only sparkling wine
from that region can be called Champagne.

B. Deceptive Marketing of Products

 Misleading use can also involve deceptive advertising or marketing tactics that make a
product appear to be a genuine GI product when it is not.

o Example: A wine labeled as "Bordeaux" produced in a region outside the Bordeaux

region in France, creating the false impression that the wine is made in Bordeaux,
which is known for its distinct characteristics and quality.

C. Imitation of the Name, Symbol, or Label

 The misleading use of GIs can also occur when an entity imitates the label or packaging of a
GI product in such a way that it resembles the genuine product, leading consumers to think
they are buying a genuine GI product.

o Example: A cheese made outside the Parmigiano Reggiano region in Italy might
label itself similarly or use a label with "Parmesan," even though it does not meet
the traditional production standards of the genuine Parmesan.
D. Use of False Claims or Geographical Terms

 A product may falsely claim to be made in a specific geographical area when it is not. This
might involve using a term that sounds like a GI or misusing a geographical name to mislead
consumers about the origin of the product.

o Example: Labeling a product as “Indian Tea” when it is not grown in India, or using
terms like “Swiss-style” without the product having any connection to Switzerland.

2. Legal Protections Against Misleading Use of GIs

A. TRIPS Agreement – Article 22

 Article 22 of the TRIPS Agreement requires members of the World Trade Organization
(WTO) to provide legal means for the protection of GIs. It specifically focuses on protecting
consumers and producers from misleading uses of GIs.

o Article 22(1): Protects GIs against the use of terms that mislead the public regarding
the origin, nature, or characteristics of the goods. A GI cannot be used on products
that do not originate from the region it refers to.

o Article 22(2): Provides the legal framework to prevent unfair competition arising
from the misleading use of GIs.

B. National and Regional GI Laws

 In addition to international agreements like TRIPS, many countries have national laws that
govern the use of GIs and provide protection against their misuse. These laws may include
the registration and certification of GIs and outline the penalties for violating them.

o Example: The European Union has a specific system for the protection of GIs under
the European Union Regulation No. 1151/2012 for agricultural products and
foodstuffs, which gives protection to names such as Parmesan and Roquefort. The
use of these names is restricted to products meeting specific production
requirements in the corresponding regions.

C. Enforcement and Legal Actions

 Legal remedies for misleading use of GIs often include injunctions, damages, and
confiscation of infringing goods. Producers of genuine GI products, regulatory authorities, or
organizations managing the GI can take legal action to stop the misuse of a GI and seek
damages.

o Example: Producers of Tequila (a GI product from Mexico) may file lawsuits against
companies that use the term “Tequila” on products that do not come from the
specified Mexican region and do not meet the production standards.

3. Consequences of Misleading Use of GIs

A. Harm to Consumers

 The most immediate harm caused by the misleading use of GIs is to consumers who may be
deceived into purchasing inferior or substandard products, believing they are getting the
authentic, region-specific product.
 o Example: Consumers buying fake Champagne might expect the same quality as the
real Champagne but end up with an inferior product, which undermines trust in the
market.

B. Economic Harm to Producers

 Producers who are legitimately producing goods under a GI face economic harm because
they may lose market share to counterfeit products or misrepresentations that benefit from
the GI’s established reputation.

o Example: If a Cognac producer outside the Cognac region sells brandy labeled as
"Cognac," they benefit from the reputation of the genuine product, which results in
lost revenue for authentic producers.

C. Undermining of Regional Identity and Heritage

 Cultural and traditional significance can also be at risk when a GI is misused. GIs often
represent the heritage, craftsmanship, and traditions of a particular region, and misuse can
dilute this cultural value.

o Example: Feta cheese, traditionally made in Greece, is a symbol of Greek culture.

When producers outside Greece use the term “Feta,” it not only harms the
producers but also threatens the cultural identity associated with the product.

D. Distortion of Competition

 The misuse of GIs can distort the market and create unfair competition. Counterfeit or
misleadingly labeled products can undermine the competition for authentic products,
making it harder for legitimate producers to maintain their market position.

o Example: If a non-authentic Basmati rice is sold with misleading labels claiming it’s
from India or Pakistan (where Basmati rice is genuinely grown), the market for
authentic Basmati rice may suffer.

4. Remedies and Solutions for Misleading Use of GIs

A. Strengthening Legal Frameworks

 Countries and regions should adopt and enforce strong legal frameworks that ensure the
effective protection of GIs, including registration systems, certification, and mechanisms for
penalizing misuse.

B. Public Awareness Campaigns

 Raising consumer awareness about the significance and authenticity of GIs is essential in
reducing the risk of misleading practices. This helps consumers identify authentic GI products
and avoid counterfeit products.

C. International Cooperation

 International cooperation between countries, through the WTO, WIPO, and other platforms,
is crucial to combat the global misuse of GIs. This may include information exchange,
technical assistance, and harmonizing GI protection standards.