Trade mark and geographic indications are both a form of intellectual property. The purpose of legally protecting something under trade mark law and geographic indication is to secure the products local to an area, promote tradition and cultural vitality, and to prevent the confusion in consumers between products from a protected area and non-genuine products. This essay will analyse the legal protection of place names in regards to coffee through geographic indication law and trade mark law within the European Union.
Legal Protection through Geographic Indication Law
As defined in Section 3 Article 21 of the Trade Related Aspects of Intellectual Property Rights (hereinafter TRIPS Agreement), geographic indications ‘identify a certain good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographic origin.’ The general notion behind geographic indications is that a distinct geographic location produces certain products with qualities that could not be reproduced anywhere else as’ it is thought that the geographic location is imperative to the production of that specific product and its quality and characteristics. In short, it is a tool used to regulate the resources from an area . Among the members of the European Union, geographic indications are protected through sui generis law. Geographic indication provides a ‘defence mechanism’ against the cultural appropriation of a product and to prevent the industrialisation of the production of foodstuffs.
Even though the establishment of protection of geographic indications under the EC Regulation 2031/92 has been set up 26 years ago, it is argued by Roman Tueber that most coffee geographic indications are still quite an informal at the time of 2010 with most registered geographic indications being related to cheese and, wine and spirits. However, after the approval of term ‘Café de Colombia’ as a protected geographic indication in the European Union under the Council Regulation (EC) No 510/2006 in 2007 and coffee geographical indications being recognised as a ‘qualified’ intellectual property right by the WTO, it shows the increased commitment of coffee-producing countries to accomplish an appropriate legal protection for their geographic indications. To assert the need of geographic indication is, to some degree, to assert the significance and protection of local culture and tradition despite ever-growing of contemporary globalisation and institutionalised production of goods. It also, in a way, helps protect producers of an area from unfair competition and prevents their product from being ‘counterfeited’.
Trade Mark, as described in Article 83 of Regulation (EU) No. 1001/2017, is a sign capable of clearly identifying a certain good or services of a business. Trade mark is one of the protected forms in intellectual property. Unlike geographic indications, trade mark protection is a personalised type of intellectual property law and is used to identify the producer of a certain good.
As a trade mark is a type of ‘personal' right, a place name or in this case, a geographic origin would not be protected under the Trade Marks Act 1994 (hereinafter TMA 1994). As set out Section 3(b) of the TMA 1994, a trade mark shall not be registered if it is ‘of such nature as to deceive the public (for example as to the nature, quality or geographical origin of the goods or service).’8 Similarly, in Article 3(1)(c) of Council Directive 89/140, a trade mark is refused registration if it ‘consists exclusively of signs or indication… to designate… geographic origin…’
It was further confirmed in the case of Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber (C-108/97), the ECJ rejected application for trade mark of a geographic origin, referring to Section 3(1)(b) of the Directive on the basis that geographic place names should be freely used for the benefit and interest of the general public as a positive relationship between the name of a place and a trade mark could influence a consumer towards a product. Furthermore, in the case of The Tea Board v EUIPO (C673/15), the ECJ held that the fundamental objective of an EU collective mark to recognise the commercial origin of the goods or services of the propriety of the trademark from other undertakings and not to be noted for the geographic origin.
However, there are exceptions that would potentially allow the trade mark of a geographical place name. In the case of Windsurfing, the burden of proof to evidence that a geographic origin is capable of being a registered trade mark lies on the rule of distinctive character whereby a geographic origin is strongly identified together with a specific good. Secondly is the subjective test that there is no link between the trade mark and geographical place name in the mind of a consumer.
In conclusion, although the legal protection of place names in relation to coffee does not have the same long line history as geographic indications of wine and spirits, it gradually inserting its importance in intellectual property law in order to protect the name, reputation and culture of a country. However, the place name does fall under the protective umbrella of trade mark law in order to promote a ‘free-to-use' mindset among the member states which is applicable to all types of products unless under special exceptions.