Reconstituting the ‘Conflict’ between Geographical Indications and Trademarks
Vanshaj Ravi Jain
National Law School of India University
Much has been said on the subject of Geographical Indications (GIs) and trademarks, and the turbulent relationship between these two ‘quibbling siblings’. The ‘conflict’ between the two is often premised on their conceptual similarity – that both GIs and trademarks are simply different means of enabling consumers to distinguish between goods through symbols that indicate a product’s quality. While GIs seek to do this by using a symbol that links the product to a territory that is reputed for those goods, trademarks use symbols that link the product to an undertaking’s reputation and history. As a consequence, when a particular word is claimed for protection by both GIs and trademark, there arises a contest of priority – which of the two ought to be permitted exclusive use of this word?
Any resolution of this conflict is almost always advocated based on value-judgments. There are some who argue in favour of the ‘first in time, first in right’ approach, whereby the symbol that was registered earlier would be entitled to protection. To do so, they rely heavily on the value of private property and the unwarranted expropriation that would occur if a vested property right – such as a registered trademark – were to be arbitrarily annulled by the State, in order to enable a later claim to the symbol in question. On the other hand, there are those who argue that GIs ought to be given precedence, even over a prior, vested trademark. This argument is premised on the value of protecting cultural heritage and enabling rural development in the face of encroaching globalization – a feat that only GIs can achieve.
This paper seeks to argue against the need for such value-judgments. Instead, it attempts to unpack the notions of trademark and GIs and prove that, although they serve a similar purpose, they are conceptually different. While GI’s rely only on the descriptive element of a word, trademarks rely on its secondary meaning. As a consequence, this paper argues that it is impossible to have a ‘conflict’ between these notions for two reasons. First, because in a properly functioning regime of IPR, the words that would be used as GIs would not be capable of registration as trademarks; and second, that even if such words were to be registered as trademarks, their use as GIs would not conflict with the exclusivity granted to trademarks, due to the fair use exception permitted for descriptive terms. By doing so, this paper attempts to redefine the epistemological arena within which trademarks and GIs have been paired off against one another and prove that the two notions are not the ‘quibbling siblings’ they have been made out to be, but only indifferent strangers, living separate lives.
 See D. Gangjee, Quibbling Siblings: Conflicts between Trademarks and Geographical Indications, 82 Chicago-Kent Law Review 1253 (2007); F. Gevers, Conflicts between trademarks and geographical indications—the point of view of the International Association for the protection of industrial property (AIPPI), WIPO Symposium on the International Protection of Geographical Indications, 143 (1995); H. Harte-Bavendamm, Geographical indications and trademarks: Harmony or conflict?, WIPO Symposium on the International Protection of Geographical Indications (1999); J. Hughes, Champagne, Feta, and Bourbon: The Spirited Debate About Geographical Indications, 58 Hastings L.J. 299 (2006); A. Kur & S. Cocks, Nothing but a GI Thing: Geographical Indications under EU Law, 17 Fordham Intell. Prop. Media & Ent. L.J. 999 (2007).