Semester9.devashishtigga.intellectualpropertyright. Rollno 44.docx

Overlap of Geographical Indications and Trademark (Project Report)

Submitted To: Mrs. DebmitaMondal

(Faculty: Trademark Law)

Submitted By:

Devashish Tigga B.A.LL.B. (Hons.), Semester-IX Section B, Roll No. - 44

Hidayatullah National Law University Raipur (C.G)

DECLARATION

I, Devashish Tigga, hereby declare that, the thesis of the project work entitled, ‘Overlap of Geographical Indications and Trademark’ is of my own & this project work is submitted to H.N.L.U. Raipur. It is record of an original work done by me under the able guidance of Mrs. DebmitaMondal, Faculty Member, H.N.L.U., Raipur.

Devashish Tigga

Roll No. 44

Batch XIV

Semester IX

Section B

Acknowledgements

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I feel highly elated to work on the topic “Overlap of Geographical Indications and Trademark” The practical realization of this project has obligated the assistance of many persons. I express my deepest regard and gratitude to my teacher, Mrs.DebmitaMondal for her unstinted support. Her consistent supervision, constant inspiration and invaluable guidance have been of immense help in understanding and carrying out the nuances of the project report. I take this opportunity to also thank the University and the Vice Chancellor for providing extensive database resources in the Library and through Internet. My gratitude also goes out to the staff and administration of HNLU for the infrastructure in the form of our library and IT Lab that was a source of great help for the completion of this project Some printing errors might have crept in, which are deeply regretted. I would be grateful to receive comments and suggestions to further improve this project report.

Devashish Tigga Roll No. 44 Batch XIV Semester IX Section B

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PART I- INTRODUCTION 1. Introduction.............................................................................................. 5 2. Defining the concept................................................................................. 5 PART II- WHY THEY ARE IN CONFLICT 1. Differences and points of conflict between trademarks and GIs.......... 6 2. How trademarks and GI are in conflict with each other....................... 8 PART III- SOLUTION 1. First in time, first in right.......................................................................... 2. Co-existence................................................................................................ a. The Budweiser case........................................................................ b. The PHARMA case........................................................................ c. The WTO dispute...........................................................................

9 10 10 13 13

PART IV- INDIAN POSITION 1. Conflicts under the Indian Act.................................................................. 18 PART V- CONCLUSION...................................................................................... 19

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PART I- INTRODUCTION Both trademarks and geographical indications are legal devices which control communication of a product’s quality to the purchasers. Trademarks indicate the commercial origin of the products and geographical indications indicate the geographic origin of the product. Tension arises when both devices overlap on the same subject matter. This project analyses both these concepts and examine how they’ve come to be in conflict. It further analyses different solutions that might effectively solve the problem.

Defining the concept In general parlance trademarks are signs, which are used in order to distinguish goods or services of a producer from the goods or services of another. Trademarks were protected in the Paris Convention for the protection of Industrial Property 1883. However, the Paris convention did not provide for a definition for trademarks. This can be found under Article 15 in the Agreement on Trade Related Aspects of Intellectual Property Rights of 1994. Article 15.1 of the TRIPs agreement states that: “Any sign, or any combination of signs, capable of distinguishing the goods orservices of one undertaking from those of other undertakings, shall be capable ofconstituting a trademark”.

It flows from the main function of trademarks is to distinguish one good or service from similar goods or services. Article 16 of the TRIPs Agreement states the rights conferred to an owner of trademark. The owner has exclusive right to prevent all third parties from using such identical or similar signs which would cause confusion in the minds of purchasers. Article 17 of the Agreement provides for a limited exception which members to the Agreement can provide for. Such exception can include fair use of deceptive terms as long as they take into account the legitimate interest of owner of trademark and third parties.

Unlike trademarks, geographical indications are protected on the national and regional level. In general a geographical indication is recognised in the country in which the place to which the geographical indication referred to is located.

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TRIPs agreement defines the expression geographical indication. Article 22(1) of the TRIPs agreement states: “Geographical indications are, for the purpose of this agreement, indicationswhich identify a good as originating in the territory of a Member, or a region orlocality in that territory, where a given quality, reputation or other characteristicof the good is essentially attributable to its geographical origin”.

PART II- WHY THEY ARE IN CONFLICT Differences and points of conflict between Trademarks and Geographical Indications When comparing intellectual properties it is essential to consider the following aspects- (1) The nature of the owner, (2) The term of protection, (3) The nature of the object, and (4) the nature of the right. With regards to the owner of the IP it differs between trademarks and GI as persons, individual or corporations, own a trademark, whereas for GI it is owned by a collective body. Owners of trademark can license the right to the mark whereas a GI cannot be licensed to someone as users of indication are not its owner. The term protection also differs between the two as the term for protection of a trademark is no less than 7 years as per the TRIPS agreement. But for a GI there is indefinite protection. While holders of trademarks and geographical indications may both effectively have indefinite protection, the policy behind the approach differs. This is because a trademark is subject to an ongoing use requirement in association with the registered goods compared to geographical indications which rely on demonstrating a link to the past and do not require renewal once the link has been successfully established.1

With regards to object protected in trademark and GI there is some overlap. Both essentially serve to protect the good. Both trademarks and GI serve an informative function for

1

Melissa A Loucks, "Trademarks and Geographical Indications: Conflict or Coexistence?" (2012), Electronic Thesis and Dissertation, Repository Paper 850

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consumers as they help to distinguish those from other good in the market. But while both serve to protect goods, one may also register a trademark for services. This is not possible for a geographical indication. Another difference is with regard to the commercial origin of both. The commercial origin of a good protected by a trademark may vary over time but the origin of the GI good is inextricably linked to one location associated with the product’s reputation. This is a restriction on GI as one must show the link between the product and the region of production. The distinctiveness of a geographical indication is “the ability to differentiate between similar products on the marketplace and not in the classical trademark sense.”2

Another difference e lies with respect to the nature of object. A GI may only protect one good while a trademark may protect multiple goods in multiple product categories. For example, the geographical indication of ‘Champagne’ can only refer to the fizzy beverage made from grapes and fermented twice. The trademark ‘JACKSON TRIGGS’ may be registered for use in association with sparkling wine, clothing and or restaurant services.

Another pointof difference is in the nature of the right. Both devicesgrant exclusive rights to certain uses of a word or symbol. Exclusivity protects consumer from deception as to the product’s origin and thus shields it from unfair competition. This is the same for both. But with respect to GI the exception is that the exclusivity belongs to the collective of users as opposed to one corporation. Also the origin of right differs for both. Trademarks are a result of human creation and requirea substantial amount of time to be recognized by the public. Also the trademark is only useful as long as the public sees the link between the product and the symbol. But for a GI it represents the link to the country’s history tradition and culture.

Thus it can be seen that trademarks and GI are related concepts and both ultimately seek to identify a product’s source and act as information for consumers. But they are fundamentally different concepts.

2

Barton Beebe ‘Search and Persuasion in Trademark Law’ (2005) 103 Michigan Law Review at 2028-2031

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How trademarks and Geographical Indications are in conflict with each other It has already been established that both concepts are fundamentally different and hence should not ideally overlap. But this is not the case. When both the trademark and GI have the same descriptive mark they come in conflict with each other. For example, the registered trademark for Mont Blanc on pens or Amazon for an online bookseller will be challenged when a GI is registered from those areas.

The issue of conflict does not arise when the marks deal with different products as this does not cause any sort of confusion in the market. It is only when both the trademark and the GI deal with same product that the conflict arises.

A conflict never arises when there is a registered GI first and then a trademark is sought to be registered under the same name. The TRIPS Agreement and the principles of passing off have accorded enough protection for GIs.

The conflict arises when there is registered trademark first and subsequently a GI is sought to be registered. This issue does not arise if both these IPs are in different jurisdiction. But when there exists a trademark in a country and later a GI from another jurisdiction is sought to be registered in the country the conflict occurs.

The conflict between GIs and trademarks can generally be seen as a conflict between old world and the new world. The old world consists of Europe, Middle Eastern and Asian countries that are fundamentally long standing cultures. The new world consists of countries such as North America, Australia and New Zealand. These countries are comparatively younger as they have been colonized by European cultures for decades. Because of colonization and migration these countries have developed a culture that has some sentiments and similarities to the old world countries. The old world gives large emphasis and protection to geographical indications whereas the new world largely protects trademarks.

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Migrants from old world to the new world tend to register marks having the same name as a place they have some sentiment towards. When a subsequent GI from the same place is sought to be registered in new world the conflict arises.

PART III- SOLUTION First in time, first in right The principle of first in time, first in right was initially suggested as a means of resolving the conflict. The underlying reason for this principle is that consumers have already come to understand the prior mark and anything subsequent would only lead to confusion.

The problem with this approach is that it merely oversimplifies the issue. It puts both the GI and trademark at the same pedestal and in effect makes it into a Trademark v. Trademark concern. As already discussed trademarks and GIs are two very different concepts. Treating them as interchangeable concepts only leads to injustice. There are various other factors to be considered in resolving the conflict. GIs are usually latecomers at any registration party.3GIs serve as a vector for implementing a raft of goals relating to agricultural policy, rural development, and in some cases, helping to preserve the cultural heritage. The justifications for GI protection are not restricted solely to preserving communicative clarity in the marketplace, but respond to these additional policy concerns and recognize intergenerational knowledge and investments in production methods.

When it comes to international protection, GIs have already done the hard work of building national reputations, often over centuries. In contrast to this a trademark attains recognition or reputation by publicising the product. A considerable amount of resources are spent by companies to create a link between the product and the mark. They lose out when GIs are registered as they lose their market base. The use of the mark by a trademark owner is also

3

Dev Gangjee, Quibbling Siblings: Conflicts between Trademarks and Geographical Indications, 82 Chi.-Kent. L. Rev. 1253 (2007)

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legitimate as the mark came into existence probably because of some sentimental attachment to the place.

There is also the fact that the principle of first in time, first in right is solely rests upon territoriality. First in one jurisdiction ignores developments in others; specifically developments in the country the product originally took the regional name.

Thus the principle of first in time, first in right is wholly inequitable.

Co -existence It is in the wake of this that concept of co-existence emerged. It can be understood clearly through the following three case studies:

1. The Budweiser case 2. The Pharma case 3. The WTO dispute

The Budweiser case4

Since the late 1800s the American brewer, Anheuser- Busch, and the Czech brewer, Budejovicky Budvar, have fought over the right to use the Budweiser name. In 1876 Anheuser- Busch began to manufacture beer for an immigrant from Bohemia, Carl Conrad under the name ‘CCC Budweiser Beer’. In 1883, he acquired the right to use Budweiser from Conrad. From his travels in Europe Conrad was aware that Budweiser beer was considered to be one of the top quality beers made in Europe. Both Anheuser and Conrad wanted the American brewed beer to be similar in quality, colour, and flavour and taste as the one made in Bohemia.

In 1895, the Budvar brewery was founded in the town of Ceske Buejovice, in south Bohemia. The town has a seven hundred year history of brewing beer which is entwined with the local 4

Anheuser-Busch Inc. v Budejovicky Budvar Narodni-Podnik [2000] EWCA Civ 30 [Anheuser 2000]

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tradition and culture. The facades of historic buildings in the town depict breweries and brewing elements such as beer barrels, hopps, and beer cups. 5Local restaurants that sell beer on tap also display folk art portraying the region’s beer brewing tradition. Budvar started using the names Budvar and Budweiser for the company’s beer in 1895. There were other breweries in the town at the time too. But over time Budvar acquired these breweries and eventually became the sole producer. The term Budweiser is an adjective originating from the German language name of the Czech town Ceske- Budejovice- Budweis. In German suffix ‘er’ is added to the name of the town to indicate that something originates from a specifictown. This is how the name Budweiser originated.6

Between 1898 and 1911 this Czech beer was imported into America and Anheuser Busch argued that the use of the word Budweiser infringed his trademark. In 1911, he finally entered into an agreement with Budvar allowing Anheuser- Busch to use the term Budweiser outsideof Europe as long as he did not use the word original along with it. In return budvar agreed not to object to Anheuser- Busch’s trademark application in the US. Budvar reserved the “right to use the word ‘Budweiser’ on its product in the United States and elsewhere throughout the world.

In another agreement between Anheuser-Busch and Budvar executed on September 4, 1911, the Czech company conceded Anheuser-Busch’s trademark rights in the United States “in the word ‘Budweiser’ and agreed to use the word ‘Budweiser’ only to describe the geographical origin of this beer.” Anheuser-Busch paid Budvar 82,500 Austrian kronen in exchange for the Czech company to withdraw its objections at the American Patent Office.

On September 27, 1938 Anheuser-Busch adopted a resolution directing its officers to take such legal and other action as might be necessary to eliminate the further use of the word ‘Budweiser’ by the two brewers at Budweis. The Anheuser-Busch representatives negotiated agreements with the Czech brewer in the first quarter of 1939. Budvar agreed to discontinue their use of the name ‘Budweiser’ on their beer sold in the United States and its territories, in exchange for which Anheuser-Busch paid them a total of $127,000. Robert M. Kunstadt & Gregor Buhler, “Bud” Battle Illustrates Peril of Geographic Marks, (1998) 20 Nat’l L.J., C4. 6 Philippe Zylberg, “Geographical Indications v. Trademarks: The Lisbon Agreement: A Violation of TRIPS?” (2002)11 U. Balt, Intell. Prop. L. J. at 40 5

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As stated above, Anheuser-Busch had agreed not to enter the European market in the August 19, 1911 agreement. But none of the agreements signed by the parties referencing the geographic use of Budweiser addressed the jurisdiction of the United Kingdom. And therefore he sought to export his product there.

The British legislation before the TRIPS Agreement allowed competitors of trademarks to co exist. So both companies had a market in UK. They both contested their right to use the name Budweiser for their beers in UK. The English High Court in resolving the dispute gave rise to the concept of ‘concurrent honest use’. Whitford J. dismissed both claims and held that both parties were allowed to “use the name Budweiser since in 1979 there was a dual reputation and neither had achieved the reputation improperly and neither was making a misrepresentation. 7 He stated that “Parliament had recognized that circumstances might arise in which two different persons ought to be entitled to use one and the same mark in respect of the same goods.” The judge also held that ‘BUD’ was the “inevitable abbreviation of the name Budweiser.”Anheuser-Busch appealed but the Court of Appeal dismissed the case.The result was that both parties could claim entitlement to the use of ‘BUDWEISER’ in the United Kingdom.

Subsequently, Budvar registered Budweiser as a trademark in UK which was contested by Anheuser- Busch. But post TRIPS Agreement, UK enacted the Trade Marks Act, 1994. Both companies sought to register the term Budweiser under the new Act. Anheuser-Busch submitted a registration application on December 11th, 1979 although the mark was not registered until May 19th, 2000. Budvar’s ‘BUDWEISER’ mark was also registered on May 19th, 2000 but Budvar had applied for the registration much later, on June 28th, 1989.8

The matter was heard by the United Kingdom Court of Appeal and involved interpretation of the Trade Mark Directive, because the issue was raised of how far EU registered trademark law permits honest concurrent use of trade marks. The Court noted that Budvar’s use of the 7

Anheuser-Busch Inc v Budejovicky Budvar NP (t/a Budweiser Budvar Brewery) [1984] FSR 413 [Anheuser 1984] 8 Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik [2009] EWCA Civ 1022 [Anheuser 2009]

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Budweiserdid not have an adverse effect on Anheuser’s trademark. The result was therefore that despite the 1994 Trade Marks Act in UK, which adopted the principles laid down in the TRIPS Agreement, both the trademark and GI marks were allowed to co-exist.

The PHARMA case 9 The applicant, the Consorzio, was founded in 1963 by twenty three prosciutto producers located in Parma, Italy who manufactured this distinctive ham. It had grown to include over two hundred members around the time of these disputes. It attempted to register a certification or collective mark but found a similar sign already existed on the trademark register for the same or similar products in the United States.

The Parma Sausage case inthe U.S. showcases the legitimacy ofclaims on both sides. The term PARMA BRAND and the associated designhad been registered in 1969, for meat products-namely, sausage, salami,capicollo, prosciutto and lunch meats and at the relevant time was ownedby Parma Sausage Products, Inc., which was a Pennsylvania corporation. Subsequently,the Consorzio applied for three certification marks, "Parma Ham,""Prosciutto di Parma," and "Parma" with the ducal crown design in 1984.Based on the prior registration, the application was rejected under section2(d) of the Lanham Act.

Despite an agreement between the parties where the termprosciutto was removed from the respondent's portfolio of products registeredunder PARMA brand and the consensus that the arrangementwould not lead to any confusion, the examiner at the trademark office nevertheless rejected thecertification mark applications. This left the Consorzio with no alternativebut to challenge the prior trademark, and they argued that PARMAbrand was geographically deceptive within the meaning of section 2(a) of the Lanham Act,because the respondent used the mark with the intent to deceive the publicinto believing that its products originated in Parma, Italy.

9

Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 U.S.P.Q.2d (BNA) 1894, 1992 WL 233379 (T.T.A.B. 1992).

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The court laid down there was merits to both the cases. On one hand commercial production of Parma ham dated back to 19thcentury. The Consorzio established in 1963 monitored, standardised and protected the production of prosciutto di Parma. In 1970 the Italian government had passed a law restricting the use of the name to ham having certain qualities relating to its place of origin and production methods. The petitioners function was to oversee that only products maintaining these standards would receive the name. Attempts were made to establish the ham’s reputation in U.S. but it suffered a setback when the African swine flu broke out in the late 1960s and the U.S. government banned the importation of pork products. One the other hand, the respondent’s company was started in mid 1950s and the proprietor was formerly a native of Parma, Italy. He therefore had adopted the name in honour of his hometown.But all products were made in the U.S. Therefore the use of the mark by the respondent was legitimate.

The Board finally concluded by stating that: “We candidly acknowledge that this case has presented us with a difficultsituation to resolve. On the one hand, petitioner has expended great effortsto promote prosciutto from Parma, and has apparently developed aworld-wide reputation for this product. It also has extensively used andpromoted certification marks containing the word PARMA and is facedwith not being able to register them in the United States because of respondent'sregistration. Further, the absence of prosciutto di Parma fromthe United States market for 22 years was not petitioner's fault, and indeedwas a situation which it sought vigorously to change. On the otherhand, respondent has used its PARMA BRAND mark for more than 35years, and has owned a registration for it for more than 20 years. At thetime it adopted and at the time it registered its mark, PARMA BRANDand design was neither geographically deceptively misdescriptive norgeographically deceptive.

The Board concluded that in these circumstances, it would be moreequitable to favour the respondent. But in the end the Consorzio did manage to register their marks while therespondent's mark continues to exist on the register PARMA brand.

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The World Trade Organisation dispute10 On July 14, 1992, the European Community adopted the Regulation 11 . The Regulation established a European Union wide system for notification and registration of European geographical indications for agricultural products and foodstuffs.

On June 1, 1999 the United States requested consultations with the European Communities regarding the Regulation’s alleged lack of protection for trademarks. This was the first challenge to a domestic geographical indication protection system alleging non-compliance with international law. The United States and the European Communities met on July 9, 1999 but were unable to resolve the dispute. Australia complained about the Regulation on April 17th, 2003 within the World Trade Organization framework. On August 18, 2003 the United States requested that the World Trade Organization’s Dispute Settlement Body establish a panel to address the concerns regarding the Regulation. As both the United States and Australia had raised concerns about the Regulation, the World Trade Organization combined the proceedings. Numerous other Member States, including Canada, reserved the right to participate as third parties to the proceedings.

The arguments by the U.S. and Australia were focused mainly on two areas: national treatment of World Trade Organization Members and trademark owners’ rights. The second question is the one that mainly focuses on the issue of conflict between trademarks and geographical indications. The American and Australian arguments regarding trademark owners’ rights in the World Trade Organization Dispute centred on an alleged inconsistency between Article 14.212 of the

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DISPUTE DS290 EC Council Regulation 510/20016 12 Article 14.2 of the Regulation- With due regard to Community law, a trademark the use of which engenders one of the situations indicated in Article 13 and which has been applied for, registered, or established by use, if that possibility is provided for by the legislation concerned, in good faith within the territory of the Community, before either the date of protection in the country of origin or the date of submission to the Commission of the application for registration of the designation of origin or geographical indication, may continue to be used notwithstanding the registration of a designation of origin or geographical indication, provided that no grounds for its invalidity or revocation exist as specified by Council Directive 89/104/EEC 11

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Regulation and Article 16.113 of the TRIPS Agreement. The main objection by the United States and Australia was that the Regulation allowed a registered trademark to co-exist with a geographical indication registered after then trademark. It is helpful to analyze the Regulation’s surrounding provisions, particularly Article 13 and Article 14.3, to understand the World Trade Organization Dispute. Article 13 of the Regulation clarifies the protection available for a geographical indication registered under the Regulation. Paragraph 1 of Article 13 protects a registered geographical indication from misleading uses. The positive right to use the geographical indication is implicitly granted by the Regulation. The result of this positive right is that a registered geographical indication trumps the right of trademark owners to prevent the use of a sign that infringes trademarks.14

Australia and the U.S. argued that Article 14(2) of the Regulation was in breach of Article 16(1) of TRIPS by allowing the coexistence of a later GI with an earlier registered trademark. They claimed that Article 16(1) requires Members to give owners of registered trademarks the exclusive right to prevent confusing uses of similar or identical signs by all third parties.

The U.S. argued that coexistence necessarily implies that a trademark owner lacks the ability to exercise the exclusive right which is the most essential feature of a trademark right. GIs, as indications, fit within the ambit of similar or identical signs in Article 16(1) of the TRIPS Agreement.

In its response, the EC claimed that prejudice to the trademark owner's interest was avoided by Article 14(3) of the Regulation. This prevents the registration of a GI where, in light of an earlier trademark's reputation and the length of time it has been used, such registration would be liable to mislead consumers. This was not satisfactory to the U.S. and Australia as this

of 21 December 1998 to approximate the laws of the Member States relating to trademarks and/or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. 13

Article 16(1) of TRIPS Agreement- The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use. 14 Supra note 1

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provision only protected those trademarks which were widely known and has existed for a long time. The EC suggested that coexistence was permissible under Articles 24(5)15of TRIPS as Article 24(5) specifically preserves the validity and right to use a grandfathered prior trademark where a subsequent GI was registered. This suggested that other rights could be modified such as the right to exclusive use of the trademark in Article 16(1). Coexistence would not affect the right to use, merely the ability to exclusively use.16

The panel concluded that there was insufficient material to imply in Article 24.5 either the right to prevent confusing uses or a limitation on the right to prevent confusing uses. The panel finally stated that Article 24 of the TRIPS Agreement allowed for the possibility of coexistence of GIs and trademarks and that this provision only paved the way for a more equitable solution.

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Article 24(5) of TRIPS Agreement- Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: (a) before the date of application of these provisions in that Member as defined in Part VI; or (b) before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication. 16

Supra note 1

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PART IV- INDIAN POSITION Conflicts under the Indian Act In the Geographical Indication of Goods (Registration and Protection) Act, 1999, in cases of conflict between trademarks and geographical indications had provisions under Section 26(1)17. It basically provides for the trademark which has been acquired either before the commencement of the Act or before the date of filing the application for registration of such geographical indications. It states that it shall not prejudice the registrability or the validity of the registration of such trademark under the law relating to the trademark for the time being in force, or the right to such trademark on the ground that such trademark is identical or similar to such geographical indication.18 Therefore this provision corresponds to provision in the TRIPS Agreement as it allows for both the trademark and the GI to co-exist. But there may exist confusion in the future with regard to the restriction provided in the provision. There is no clarity with regard to the term ‘in good faith’. What would constitute acts done in good faith would depend on the judiciary.

17

Section 26(1) of Geographical Indication of Goods (Registration and Protection) Act, 1999 - Where a trade mark contains or consists of a geographical indication and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where rights to such trade mark have been acquired through use in good faith either(a) before the commencement of this Act; or (b)before the date of filing the application for registration of such geographical indication under this Act; nothing contained in this Act shall prejudice the registrability or the validity of the registration of such trade mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such geographical indication. 18 Rekha S Chavan, Legal protection of geographical indications: national and international perspective, Ch. VI, Karnataka University (2013)

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PART V- CONCLUSION

Conclusion It can be understood from the examination above that the concept of GI and trademark are related but they are not the same concept. They cannot be used interchangeably as Article 24(5) of the TRIPS Agreement might suggest.

And as it can be seen from the case studies the principle of co-existence is the most equitable solution to this particular problem. As seen from the Budweiser case and the PHARMA case19 trademarks and GIs can co-exist. Budweiser by Anheuser-Bausch and Budvar have peacefully co-existed in the U.K. for years now. The same is in the case of PHARMA brand.

The TRIPS Agreement allows for a possibility of both these concepts of IP to exist under the same jurisdiction. One of the main concerns raised by owner of both trademarks and GIs is about the possibility of consumer deceptiveness. But as it can be seen with higher awareness and publicity campaigns the consumers can become more educated with regard to the products. By allowing this to happen the problem of deceptiveness naturally disappears. Therefore, the principle of co-existence seems to be the only solution at the moment that equitably accepts the rights of owners of both geographical indications and trademarks.

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References 1. Refer to: http://www.wipo.int/about-ip/fr/geographical_ind.htm 2. Refer to: http://www.wto.org/french/tratop_f/trips_f/intel2_f.htm 3. Rangnekar, Dwijen (2003), “Geographique Indications – A Review of Proposals at the TRIPs Council: Extending Article 23 to Products other than Wines and Spirits”. 4. Latha R. Nair & Rajendra Kumar, “Geographical Indications: a search for identity”, 2005, LexisNexis Butterworths 5. Maskus, Keith E. (2003), “Observations on the Development Potential of Geographical Indications.”, 2003. 6. http://www.bereskinparr.com/French/publications/pdf/TM-Geographic-Bereskin.pdf

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