There is considerable variation in the nature, scope and institutional forms of legal protection for valuable geographical brands such as Champagne, Colombian coffee and Darjeeling tea. While regional products are increasingly important for producers, consumers and policy makers, the international legal regime under the TRIPs Agreement remains unclear. Adopting a historical approach, Dev Gangjee explores the rules regulating these valuable geographical designations within international intellectual property law. He traces the emergence of geographical indications as a distinct category while investigating the key distinguishing feature of the link between regional products and their places of origin. The research addresses longstanding puzzles, such as the multiplicity of regimes operating in this area; the recognition of the link between product and place and its current articulation in the TRIPS definition; the varying scope of protection; and the extent to which geographical indications ought to be treated as a category distinct from trade marks.

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The emergence of claims that geographical indications (GIs) protection furthers cultural heritage goals is a relatively recent development. GIs such as Parmigiano Reggiano, Darjeeling and Bordeaux have historically been protected for reasons similar to those grounding trade mark protection. Granting exclusive rights over such signs prevents cluttered or misleading signalling in the marketplace, which benefits both consumers and legitimate producers. With the informational efficiency foundation established, there is some uncertainty as to where the heritage argument fits in and whether it is necessary at all. However the heritage dimension of regional specialities is increasingly emphasised in policy documents and academic scholarship. This article therefore sets out to: (1) identify the conditions under which the heritage argument was made possible; and (2) evaluate the different forms this argument takes and the types of work expected of it. While cultural heritage is a contested analytic category, as a resource its social, political and economic resonances are undeniable. Its contemporary prominence within the GI discourse has been associated with the potential for GIs to act as a bulwark against the neoliberal excesses of globalisation, as well as the continuing significance of place-based communities.

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This chapter provides a conceptual overview of the overlaps between geographical indications (GIs) and trade marks. It focuses in depth on three sets of controversial issues in international GI protection debates: (1) the resolution of conflicts between these two categories of signs; (2) the determination of generic status for a term that formerly had geographical significance; and (3) the practical considerations involved in opting between GI or trade mark protection regimes.

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At first glance, the recent Canadian litigation over the right to use ‘Demerara sugar’ plays out as a defamation dispute. The Guyanese Minister for Agriculture had complained that the use of ‘Demerara sugar’ by an importer on sugar from Mauritius was misleading, since Demerara took its name from the eponymous Guyanese province. The importer took exception to allegations of misleading use, characterising them as libellous. In these circumstances, the central issue before the trial and appellate courts concerned the existence of a sovereign immunity defence to libel claims. Yet despite being framed by libel law, this dispute represents the surface of deeper crosscurrents relating to international Geographical Indications protection, since the Ministers objections rested on the assumption that ‘Demerara sugar’ should be reserved for Guyanese producers. Unpacking this dispute reveals traces of the two most controversial issues in international GI law today: (1) a conflict between trademarks and GIs, as well as (2) the generic use of a formerly geographical designation. It therefore provides us with an instructive case study of an attempt to integrate GI protection within a trademark law paradigm, while also highlighting the important qualifications and limitations of this approach.

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Over recent years there has been growing interest in the relationship between trade marks and free speech. United States academics have argued that we should look to freedom of expression principles to curb the expansion of trade mark rights and this suggestion is being taken increasingly seriously in other jurisdictions. While sharing concerns about the overreach of trade mark law, we express caution about the advisability of looking to freedom of expression to solve the problem. Specifically, we argue that this focus concedes too much in terms of the reach of trade mark law, is unlikely to prove effective (at least outside of the United States) and carries with it the danger that the relationship between trade marks and speech will become overly simplified.

Working draft available at SSRN: http://ssrn.com/abstract=1604886

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This article examines the misrepresentation of American beef in the British market between c. 1890 and c. 1913. We examine the complaints voiced by British consumers, producers, and retailers and we discuss the response of the British government and the United States Department of Agriculture. A new dataset is employed to calculate the price premiums that could be earned from the misrepresentation of beef according to geographic origin. While considerable premiums could be earned by "passing-off" American beef as British in the 1890s, these premiums declined during the 1900s. Particular emphasis is placed on the inability of the British government to act unilaterally on meat marking. This article also considers origin as a means of distinguishing between categories of nonbranded goods. Yet "origin" has many dimensions. Not only does it indicate provenance, it sometimes signals quality associated with provenance while also serving as the basis for protectionist responses. This article therefore contributes to the broader debates surrounding origin marking as a commercial and legal phenomenon.

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In recent years, trade mark registries and courts have grappled with trade mark applications for silhouettes, shapes, scents, textures and tastes, as well as short cartoons, single colours, body movements and Tarzan’s yell. This invasion of the unconventional is due to the open ended definition of a trade mark. On the one hand, trade mark law has embraced a definition that emphasises the functional, rather than the ontological, status of a sign. Anything which does the communicative work of a trade mark, by distinguishing goods on the basis of trade origin, can be registered as one. On the other hand registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trade mark that is visual and consists of words and/or figurative devices. The need to reconcile these conflicting imperatives – the system is open to all categories of signs and it’s apparently ‘business as usual,’ yet the registration system was designed with only words and figurative devices in mind – requires a careful reconsideration of certain basic assumptions in this area. The Indian Trade Mark Registry's Draft Manual of Trade Mark Practice and Procedure provides the contextual framework for this reappraisal and this article endorses its cautious approach to accommodating such signs.

Draft available at SSRN: http://ssrn.com/abstract=1555807

Assesses the European Court of Justice (ECJ) ruling in L'Oreal SA v Bellure NV (C-487/07) on whether the use of the trade mark brand names of luxury perfume products on "smell-alike" price comparison lists produced by a budget perfume producer was permissible under Directive 89/104 (Trade Marks Directive) art.5(1)(a) or took unfair advantage of the marks within the meaning of art.5(2) by "free-riding" on their reputation. Criticises the reasoning of the court, arguing that the ruling is counter to Directive 84/450 and previous ECJ rulings.

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This article begins with a puzzle. Statutory provisions relating to trademark dilution were introduced for the first time into Indian law with the Trade Mark Act of 1999, which came into effect in 2003. Yet since their inception, these provisions have remained on the shelf, largely untouched for half a decade. By contrast, dilution features prominently in litigation based upon the common law tort of passing off. It thus exists in both favoured and relatively ignored forms. In Part II, this Article offers an explanation for why this polymorphism for dilution exists in India. Under passing off, dilution is a newly recognised species of harm, which flows from a misrepresentation. It is not the basis for an independent cause of action. Its recognition can be traced to prior doctrinal developments within the Indian law of passing off, concerning the abolition of the common field of activity requirement and the sufficiency of a transborder or 'spillover' reputation. Dilution is thus qualified as a new type of injury within a familiar tort geared towards preventing consumer confusion. However under the Act of 1999, dilution, in its aspect of blurring or 'detriment to distinctive character', is the basis for an independent action. This article suggests that the statutory provisions require a more narrowly defined harm in order to be triggered and differ in important ways from dilution under passing off, making precedents for the latter unsuitable for the former. Part III concludes by selectively considering the extent to which E.U. and U.S. experiences with dilution could meaningfully inform the future development of the Indian statutory regime. 

available at SSRN: http://ssrn.com/abstract=1273711

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Recent developments in trade marks law have called into question a variety of basic features, as well as bolder extensions, of legal protection. Other disciplines can help us think about fundamental issues such as: What is a trade mark? What does it do? What should be the scope of its protection? This volume assembles essays examining trade marks and brands from a multiplicity of fields: from business history, marketing, linguistics, legal history, philosophy, sociology and geography. Each chapter pairs lawyers’ and non-lawyers’ perspectives, so that each commentator addresses and critiques his or her counterpart’s analysis. The perspectives of non-legal fields are intended to enrich legal academics’ and practitioners’ reflections about trade marks, and to expose lawyers, judges and policy-makers to ideas, concepts and methods that could prove to be of particular importance in the development of positive law.

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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.

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The generic use of geographical product names has persisted as the single most controversial issue in Geographical Indications (GI) law for over a century. The controversy is compounded by political compromises at international trade negotiations, with judicial resolutions in multilateral disputes being the exception. One such exceptional case was the recent Feta dispute, where the European Court of Justice (ECJ) considered the test for generic status under the pan-European registered GI regime. The ECJ ultimately upheld the European Commission's finding that Feta was not a commonly used expression for a type of white cheese in brine, instead designating cheese with a specific Greek origin. In the process, the litigation generated an extensive unpacking of the test for genericide. A puzzle posed here was that Feta had been produced in Germany, Denmark and France for several decades. This article revisits the reasons for why this initially significant evidentiary finding was subsequently overshadowed. While generic status is based on a factual enquiry the threshold to be established, the categories of admissible evidence and the hierarchies of their importance all reflect the competing interests at stake. This in turn highlights unresolved tensions in the Unfair Competition heritage of this shadowy branch of Intellectual Property law.

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The Melton Mowbray Pork Pie litigation provides an invaluable opportunity to revisit the foundations of registered Geographical Indications (GIs), one of the more obscure intellectual property rights in existence today. An association of pie producers sought to register the name as a Protected Geographical Indication (PGI) under EC Regulation 2081/92, thereby gaining exclusive rights to the term. The application was challenged and one of the key issues was the controversial boundary drawing process to delimit the authorised production area. The dispute is presently on hold, pending a reference to the ECJ. Regulation 2081/92 is a compromise informed by two sets of national experiences. It exists at the intersection of French commitments to GI protection based on the registered Appellation d'Origine Controlee, which emerges from the history of wine regulation and the German regime, which is unregistered and grounded predominantly in Unfair Competition Law. This paper argues that the incomplete reconciliation results in a serious structural gap in the Regulation and Melton Mowbray falls into it. It concludes by suggesting ways in which to more appropriately reconcile these two approaches. 

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