Quibbling siblings: conflicts between trade marks and geographical indications

Abstract

The relationship between trademarks and geographical indications (GIs) has historically been tempestuous. Each of these quibbling siblings, members of the broader family of Unfair Competition law, entitles registrants to the exclusive use of a sign. So what happens when a GI collective and a trademark proprietor lay claim to the same sign within a single jurisdiction? As part of the renewed interest in TRIPs flexibilities and attempts at accommodating or reconciling differences between national laws, this paper explores a newly emerging space that may just be big enough for the both of them. The analysis draws on a recent World Trade Organization (WTO) Panel Report, which identifies the legal foundations for cohabitation. The Report coincides with doctrinal developments at the national and regional level which initially identified this zone of compromise: the geographical 'descriptive use' defence in trademark law. Coexistence is significant as it alters the dynamic of a venerable conflict between trademark and GI regimes, which has been locked in the language of trumps for several decades. Accordingly, this paper introduces the players and describes the game of one-upmanship prior to this development in Part I; outlines the WTO decision in Part II and then draws parallels with doctrinal developments in the EU and US which presaged the possibility of coexistence in Part III. It concludes with an endorsement of coexistence as an equitable solution