Author: Canaan Bridges Consulting | 7 min read
Is it always possible to identify a geographical indication by its name? Can trademarks be classified as geographical indications (GIs)? Are there any significant differences between these two forms of intellectual property? At a first glance, some aspects of the answer to these questions may appear obvious, but there are often grey areas to many of these issues. This note discusses the major differences and similarities between trademarks and geographical indications.
What are Geographical Indications?
(GIs) are words or symbols used on products to convey that there is a direct and traceable relationship between the product and its place of origin. This relationship must be derived from the quality, characteristics or reputation of the product, which must be directly traceable to where and how the product was made. GIs are associated with wines, spirits, foods and various types of artisanal products. Examples of GIs include Gorgonzola cheese, Champagne (Italy), Argan Oil (Morrocco), Scotch Whiskey (UK), Cornish Pastry (UK), Neuville Sweet Corn (Quebec), and Jamaican Jerk (Jamaica). The label on GI products usually provide some specification as to the distinctiveness of the product; and importantly to the connection between the place and the product.
In the case of food, wine and spirits GIs, the terroir relationship is important in developing and sustaining the designation. In effect, the product’s association with the aesthetic and/or climatic features of its place is the essential linkage that creates the GI designation. On the other hand, GIs such as soaps, clothing and other related classes of products are designated as such based on the traditional ways or processes of production. It is also possible that these types of products are granted GI status based on “hybrid enabling characteristics” – that is, a mixture of people, culture and place at play.
What are Trademarks?
Global consumer markets are often saturated by many products serving the same or similar purposes. Without a means of distinguishing one product from another , it is challenging for competitors to stand out in the marketplace. Trademarks are indicators of source. They are used in a commercial context to create distinctions between products and services, and to capitalize on market share, thereby building brand values. Sound marks, words, taste, smell, designs and holograms are examples of types of trademarks that are registrable in some jurisdictions. While GIs are also use to distinguish products in consumer markets, there remains significant differences between trademarks and GIs.
Main Differences Between Trademarks and Geographical Indications
| Trademarks | Geographical Indications |
|---|---|
| Ownership: Can be owned an individual, firm, or joint ownership. The right can also be assigned. | Ownership: Must be owned by a group. This may be a producer group (civil), or the state/municipality/government authority. The right cannot be assigned. |
Certification Marks or Collective marks bear semblance to what GIs seek to protect, but are different in that GIs usually embody more cultural and legal significance than can be apportioned or protected under certification or collective trademarks | GIs are sometimes registered as certification or collective marks in jurisdiction that do not have separate laws or trademark provisions that pertain specifically to GIs. |
Term of Protection: Renewable every 10 years (some countries still offer 15 year protection). | Term of Protection: Indefinite in most countries where a sui-generis or semi-generis system is practiced. 15 Year Protection in India (renewable every 15 years). |
| What products, What Services? Any, as long as the product or service name does not offend public order, is not scandalous or disparaging in meaning. | What products? Mostly foods, wines and spirits. Some jurisdictions offer protection to other products such as personal care products, handicrafts and pharmaceuticals. One country (Serbia) has applied GIs to services. |
Can be cancelled if an opposition successfully claims that the name is a common name generally used to refer to a product or service (for example, ketchup is envisaged as a generic name used to refer to tomato based sauces) | In some jurisdictions, once a GI is registered, it cannot be cancelled on claims of genericness (Eg. the European Union and countries that have signed on to the Geneva Act of the Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications). |
Because the trademark is owned by a firm, individual or conglomerate, the revenue generated from its monetization belongs to owners (other things being equal). There is no obligation to incorporate the socio-economic development of its home territory into how the business operates. | GIs are collective rights. When GI schemes operate successfully and efficiently, there is a keen interest in developing socio-economic initiatives that will support development projects in and around GI communities. |
Trademarks and GIs may both be relevant in your IP portfolio, perhaps one more than the other, based on your overall business and IP strategies.
To obtain a white paper on tips in designing GI strategy, send us an email (help@canaanbridgesconsulting.com).
You may also find this interesting: Of Avocados and Vanilla: Geographical Indications and Global Food Value Chains (Canaan Bridges Consulting, October 2019 Short Article)