Geographical Indications and Certification Trademarks – same difference?

The TRIPs agreement deals with Geographical Indications under Articles 22-24 and requires that each member country put in place a system to protect Geographical Indications. As per the TRIPs agreement, Geographical indications are, …, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

The TRIPs Agreement requires that each member country provide legal means of protecting Geographical Indications. The WTO recognizes that a variety of means may be employed to protect GIs – for example, India enacted the Geographical Indications Act in 1999, other countries protect GIs under their certification trademark regimes.

A certification trademark (CTM), as the name indicates, is a mark that certifies the nature or origin of the goods or services to which it has been applied. If the question that just popped into your head is “Why have a GI Act if a CTM serves the same purpose?,” you are in great company. SPICY IP decided to devote a post to this issue in the hope that our rich mix of readers will contribute to increasing general awareness about whether, and if so why, separate systems of protection are necessary.

One obvious difference between a CTM and a GI is that the former has a broader scope. WIPO explains: A CTM application can include, for example, region or location or origin, materials of construction, method or mode of manufacture or provision, quality assurance, accuracy of the goods or services or any definable characteristic of the goods or services. It can also certify manufacture or provision of services by members of a union or other organization to certain standards. A GI, on the other hand, is only an indication (or certification) of the geographic origin of goods (not services mind you! CTMs cover services) and quality or characteristics of the goods that are directly attributable to the geographic origin.

Now the question that arose in my mind was: Given that India already has a certification trademark regime, why did the legislature consider it prudent to enact a whole new act to protect GIs?

Consider the US system: the US has a certification mark system and strongly believes that it is adequate to protect GIs. However, because of its obligations under TRIPs and NAFTA, the United States amended its laws and now a “primarily geographically misdescriptive” mark cannot be registered unless the mark acquired distinctiveness before the date of the NAFTA Implementation Act (1993). Post TRIPs (by virtue of its obligations under Article 23) the US also amended its laws to prevent the registration of “GIs which, when used in relation to wines and spirits, identifies a place other than the origin of the goods….”

The amendments in the US clearly protect GIs that are geographic names. But does the US system protect marks like Basmati, that are not names of Geographic areas/regions? The answer of the US government would probably be a resounding YES – just register Basmati as a CTM!

Whether the protection granted by CTMs, or for that matter the GI Act in India is adequate protection for marks like Basmati and Darjeeling, is a different question. This is where the international fun begins. TRIPs grants separate degrees of protection to GIs relating to Wines and Spirits and a lower degree of protection to other GIs. The WHO Website explains situation in simple terms thus:

…Protection required under the TRIPS Agreement is defined in two articles.

All products are covered by Article 22, which defines a standard level of protection. This says geographical indications have to be protected in order to avoid misleading the public and to prevent unfair competition.

Article 23 provides a higher or enhanced level of protection for geographical indications for wines and spirits: subject to a number of exceptions, they have to be protected even if misuse would not cause the public to be misled.

Exceptions (Article 24). In some cases, geographical indications do not have to be protected or the protection can be limited. Among the exceptions that the agreement allows are: when a name has become the common (or “generic”) term (for example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar, in the UK), and when a term has already been registered as a trademark.

Some countries argue that the protection under Article 23 must not be limited to Wines and Spirits. It is not surprising that this argument is supported by countries such as India, that have a larger base of GIs, and is opposed by countries such as the US that do not. Not to say that the US does not have its on GIs – Florida Oranges, Idaho potatoes etc. being common examples. But the US seems satisfied with the Article 22 standard for these GIs. So why are other countries including India insisting that their GIs be grated protection similar to those granted to Wines and Spirits under Article 23?

Answering this question requires answering a number of other questions including what exactly is the scope of Article 23? Is it similar to the standard of protection granted to famous marks? In other words, does it prevent the use of marks such as “Champagne” on any goods/services in order to avoid dilution and tarnishment? (Arguably, at least the marks that are not names of geographic areas, and are “famous,” such as Basmati, ought to get protection similar to the protection granted to famous marks.) Is the enhanced level of protection under Article 23 limited to the use of GIs on goods in the same class? Further, does Article 23 prevent a sparkling wine manufacturer from stating on his product “Tastes like Champagne?” Detailed discussions on these questions are reserved for a later post… In the mean time, we invite comments from our readers!

It does seem sensible to allow the “likelihood of confusion” standard to continue for the marks that are primarily merely geographic marks; unless they have acquired an incredibly strong secondary meaning such “Champagne” of “Chablis” or maybe… “Darjeeling?!?” I am as always, happy to be opposed – all comments, agreements and disagreements are welcome!

PS: For a better idea of why “Scotch” Whisky is such a big deal and the recent debates surrounding the manner of exporting “Scotch,” See here and here.

Second Thoughts: Is there a glitch in the CTM system in India?

Section 70 of the Trademarks Act provides that a person who carries on trade in certain goods/services, may not register as a certification trademark, a mark that seeks to certify these goods/services.

Section 75 of the Act provides:
“75. Infringement of certification Trade Marks
The right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification Trade Mark or a person authorised by him in that behalf under the regulations filed under section 74, using it in accordance therewith, uses in the course of trade, a mark, which is identical with, or deceptively similar to the certification Trade Mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a Trade Mark.

From the wording of the section, it appears as though the Act grants blanket immunity to the proprietor of the CTM. One might of course argue that as soon as the owner starts “infringing” the mark, she will be caught by section 70 and section 77 that provide that any use of the mark (other that legitimate uses detailed under section 78 – which is by no means clear!) by the proprietor will lead to cancellation of the mark itself. But the question that arises is – will the cancellation of the mark be adequate to prevent a (former) proprietor from using the mark after cancellation? If not, does section 75 need immediate amendment?

NOTE: This post was jointly written by Mrinalini Kochupillai and R.Sathish Kumar. Sathish is a practicing advocate in the Madras High Court. He specializes in IP matters and was also involved in Novartis case in the Madras High Court.