Part 7: IP tools - Geographical Indications and trade marks
Existence of a previous trade mark: In some cases, previous trade marks that have been registered in good faith can prove a challenge to the recognition of a Geographical Indication identical to the pre-existing trade mark. In the case when the Geographical Indication is protected, a later (posterior) trade mark cannot be registered. In some cases, however, because of the reputation of the trade mark and because the trade mark has been registered in good faith, there can be a principle of coexistence between the trade mark and the Geographical Indication. Such potential conflicts are solved on a case-by-case basis.
In addition, in most cases GIs will not be used on their own, but in combination with trade marks. By doing so, producers obtain a two-layer protection: one in their capacity of producers as such (and with their registered individual trade mark), and one for producing a certain good within a certain demarcated geographical area (the Geographical Indication). In addition to the two-tiered protection, such combined use will provide consumers better information regarding both commercial and geographical origin of the good.
An example is provided of the GI ‘Kopi Arabica Gayo’, which is a coffee Kopi produced in Indonesia and which bears a distinctive trade mark to be identified in the market as a Geographical Indication.
Trade marks and GIs can therefore coexist in the market because the images depicting the GI can be protected trade mark. Additionally, collective trade marks can be a viable solution for small associations of producers especially if the producer group does not have the means to implement an effective branding and marketing campaign.
Learning exercise
Scenario 1: The case of Bahamas tea
There is a single applicant wanting to file for IP protection. The product is produced in Bahamas and elsewhere and there is no specific taste associated with the product neither is there a link between the area and the product. There are also no specifications and controls developed for the product.
Question: What type of intellectual property tool can be best suited to promote the product?
There is only a single enterprise concerned with obtaining IP protection. There is no specific characteristic, no link between the area and the product. In this case protection as a GI, collective or certification mark seems not appropriate. An individual trade mark could be applied for, provided that the sign fulfils the requirements for trade mark protection.
Scenario 2: The case of Kampot Cider
In this scenario, the applicant is the association of Kampot cider producers. There exist well defined regulations of use and definition of common characteristics (specifications). The Cider is produced in the Kampot region. There is a specific taste associated with the product but not necessarily linked to the geographical area. Some terms of use have been defined and some controls provided by an external control body, including sanctions in case of non-compliance with specifications and controls.
Question: What kind of intellectual property tool can be chosen to promote this product?
In this case, there is a specific product with distinctive characteristics, a collective dimension of the value chain; definition of the conditions of use and also a mechanism for external control is provided. The links to the geographical area of production are weak or non-existent. In this case a collective trade mark owned by the Association seems the best way forward, there is also scope to use a certification trade mark, but the owner of the certification mark should be clearly defined.
Scenario 3: Montserrat Hills Cocoa from Trinidad and Tobago
The applicant is Montserrat Cocoa Farmers’ Co-operative Society Limited. There are regulations of use in place as well as specifications for the product. The cocoa is produced in Montserrat region of Trinidad and there is a specific taste and other unique characteristics due to the geographical origin of the product. There are controls provided by an external body and also sanctions in case of non-conformity.
Question: What kind of intellectual property tool can be used to promote this product?
There is a collective dimension of the value chain and a geographical name of the product. There is a specific product with a strong link between the product and the delimited geographical area. Additionally, the specifications and controls have been defined. There is also external controls and sanctions. In this case, a Collective trade mark owned by the association is possible. GI protection is also possible as the link between the product and its geographical area gives specific characteristics to the product.