Champagne, Puma, Darjeeling Tea and Ford are known all over the world. A common man would recognize the given names as famous brands. On looking closely it can be realized that the above mentioned names do not belong to the same category.

Champagne and Darjeeling Tea can be categorized under Geographical Indicators, while Puma and Ford are Trademarks. There has always been confusion in the minds of people when it has come down to Trademarks and GIs. To a common man, a trademark and a GI are the identity of the good.

But where does the difference lie?

In order to explain this better, it is best to define a trademark as well as a GI.

Section 2(1)(e) of the  Geographical Indications of Goods (Registration and Protection) Act, 1999 states that:

“geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Trade mark is defined under Section 2(i) (zb) of the Indian Trademarks Act 1999 as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”

However definitions can deceive and sometimes names do get mixed up. Trademarks have used names of places for increasing the reputation of the mark, or to advertise it. This has caused a lot of confusion in the minds of the lay man. E.g. Darjeeling Lounge of the ITC.

Therefore in order to help differentiate, the following points can be taken into account:

1. Trademark is a sign, name, or identity of a business concern that is used to differentiate the goods or services of one entity from that of another. A car is still a car, but can be distinguished on the basis of the manufacturer’s trademark. For example, the BMW and Audi are the trademarks of the individual car manufacturers.

Whereas in terms of a GI, the name signifies the place of origin of the good and any manufacturer in that geographical location can use the GI for the specific good. E.g. Darjeeling tea, Swiss cheese, Tirupati Laddu. Etc.

2. A GI is basically a collective protection given to a group of manufacturers belonging to the specific location, where the good has first originated.

On the contrary, a Trademark is registered by a single entity.

3. While only one person or manufacturer can use a trademark registered in his/her name and address, every manufacturer or producer in the same region are allowed to use the same geographical indication.

4. A trademark can be a letter, a word, numerals or simply a number, or a combination of letters and numbers, an abbreviation, a name, a device, a hologram, a sound or a smell. But a geographical indication can only be a name or a symbol related to places.

5. A trademark is developed by human creativity. It is the human creativity or intellect that determines the distinctiveness or the uniqueness of a trademark. A trademark can be Suggestive, descriptive or arbitrary.

On the contrary, a GI identifies the product on basis of its place of origin. Factors such as the topography, human work, climate etc of a specific geographical location determines the nature of the GI.

6. Trademarks are governed by the Indian Trademarks Act 1999, while the GIs are governed by the Geographical Indications of Goods (Registration and protection) Act 1999.

The only similarity between a GI and a trademark is that they both function as source indicators. However, the key distinction again lies in the fact that while a trademark identifies a good or service as originating from a particular producer, a geographical indication identifies not the producer of the good concerned, but the geographical region from where the product originates. But then, both forms of intellectual property are also a tool used for identifying a product or good. Therefore people tend to use the name of a place as a trademark.

Certain examples of trademarks with places in them, would be like Tanjavur Masala Dosa or Darjeeling Café. Here is where we need to understand that using that if a name has a place it is not always a GI. The Registry usually objects to such marks in such cases as per Section 9(1)(b) of the Trademarks act 1999. But there are also circumstances where a trademark has obtained registrations, wherein as per Section 9(1) of the Trademarks Act 1999, the mark has acquired distinctiveness over a long period of time. In such cases, the Registry does consider registering the name as a Trademark on grounds that the mark has become a well known mark. In other circumstances when the population of a place is less than 5,000 then it is thought that the likelihood of traders wishing to use the name of the place for their goods is so remote that it does not represent a reasonable likelihood of the mark being used in trade as a Geographical Indicator, as stated in the draft manual for Trademarks in India.

There are certain scenarios where the name of the place only signifies a certain good manufactured only in that place for example Champagne a well known GI. But there are also scenarios, where the name of the place signifies many other factors other than the GI. For example the popular case of TEA BOARD, INDIA vs ITC LIMITED, where the Tea Board alleged ITC for naming their lounge as the Darjeeling Lounge, which as stated by the plaintiff was equal to infringing the GI Darjeeling Tea. The court held in this case that the word Darjeeling has been in use for trade purposes over a long period of time, and also obtaining a trademark for a lounge under the name Darjeeling would not create a situation where the consumer would mistake the lounge to have any relations with the famed GI. The court also held in the Bikanerwala vs New Bikanerwala case, that using a geographical name for a trademark would not be accepted unless the trademark has shown acquired distinctiveness over a long period of time. These two cases as quoted above can be quoted as examples of situations where a geographical name has been trademarked.

In one of my previous articles, I have talked about the trademarked Iruttukadai Halwa which was the prime reason for the coining of the term Tirunelveli Halwa by the people of that city. The very reason why the other halva manufacturers in the city are now trying to obtain the GI for Tirunelveli Halva. The situation therefore would cause another clash between the Trademark and the GI. There are many other examples which show that the knowledge of difference between the two forms of IP is yet to be understood by the people. Therefore, it can be hoped that in due course of time a better distinction can be drawn between a GI and a Trademark.

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