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  • QA 009
    Question:
    Can a geographical (district or area) name be trademarked?
    Background:
    Our coffee is grown in a relatively small and well-defined district. Could we register our district name as a trademark? What is the difference between a Trademark, a Geographic(al) Indication, an Appellation of Origin and a Collective Mark?
    Asked by:
    A grower cooperative in Tanzania
     
    Answer:

    Trademarks provide protection to the owner of the mark by ensuring the exclusive rights to use it to identify goods or services, or to authorize another to use it in return for payment.  The period of protection varies, but a trademark can be renewed indefinitely beyond the initial time limit on payment of additional fees. Trademark protection must be enforced by the registered owner of the mark, utilizing appropriate legal redress where necessary. In the first instance this would probably consist of formal "cease and desist infringement" letters to the party using the mark without permission, with the ultimate protection of legal redress in the appropriate judicial court. In most legal systems courts have the authority to enforce trademark ownership rights against infringement.

    In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademarks also hinder the efforts of unfair competition.  For further details visitwww.wipo.org , the website of the World Intellectual Property Organization, WIPO, Geneva, Switzerland.

    Almost all countries in the world register and protect trademarks by maintaining a register of trademarks. Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings or logos, symbols, three-dimensional signs such as the shape and packaging of goods, etc.

    A district name on the other hand provides an indication of where something or someone comes from: a Geographic (geographical) Indication.  Geographic indications can be used on goods that have a specific geographic origin and that possess qualities or a reputation that are due to that place of origin. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Geographic indications may be used for a wide variety of agricultural products, such as for example 'Tuscany' for olive oil produced in a specific area in Italy or "Champagne" for sparkling wines from a well-defined region in France.

    Appellation of origin is a special kind of geographic indication, used on products that have a specific quality that is exclusively or essentially due to the geographic environment in which the products are produced.  The concept of geographic indication encompasses appellations of origin.  Wines from France are maybe the products most frequently associated with appellations, e.g. stated as AOC Alsace (Appellation d'Origine Controlée Alsace) which certifies that the wine is from the Alsace region.

    There are differences between Trademarks and Geographic Indications. A trademark is a sign (logo) used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using that trademark. A geographic indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. All producers who make their products in the place designated by a geographic indication and whose products share typical qualities may use it. Producers outside the geographic indication may not use the name or logo, even if the quality of their product is the same or better.

    In recent years it has become more difficult to register trademarks that lay claim to a geographic name. This because of the realisation that it is doubtful that an applicant for such a mark can claim to represent all potential interested parties from the region, area or district in question.  One way around this could be to obtain officially sanctioned approval for the application from a relevant governmental or semi-governmental body from the target geographic region, area or district. Another approach could be to use a graphic (i.e. decorative) logo that refers to the area, and which would be used by many in that area subject to specified requirements. Rather than a geographic 'word mark', the graphic trademark is filed as a collective mark for goods produced from that area, from members of the area.

    For the registration of both trademarks and geographic indications (or appellations of origin which is more appropriate for coffee) you will have to file an application first of all with your national authorities. These will also be able to tell you whether anyone else has already registered what you wish to protect because you cannot register the same (or even a similar) mark or name that someone else may have registered before you. This principle of prior verification applies to foreign countries as well.

    It is advisable therefore to begin by conducting a search of existing registrations to see if anyone else has already claimed your proposed mark or name. Searches can be made over the Internet on the sites below that also provide information on procedures and regulations pertaining to trade marking and related matters generally in the EU, the US and Japan:

    * European Union: http://oami.europa.eu  (choose your language preference)

    * United States: www.uspto.gov

    * Japan: www.jpo.go.jp or directly www.jpo.go.jp/quick_e/index_sh.htm

    The EU and US sites also provide information on the Madrid Agreement that deals with the International Registration of Marks. Information on trade related aspects of intellectual property rights generally (TRIPS) is found at www.wto.org. - look for Trips.

    Finally, you will have to decide in which countries (markets) you wish to register. In most instances it is probably necessary to employ the services of a specialised attorney to prepare and file your application so there are costs involved as well.
     
    It is therefore advisable to verify first that your coffee has the distinctive and different quality characteristics that will make registration worthwhile. If you find this is the case then it may also be of interest to you to investigate registering your coffee area in a GIS (Geographic Information System) database, using GPS (Global Positioning System) techniques, and then back this up by trade marking a name or logo as well.  For more on GIS and GPS go to 03.03.00 Mapping technology in marketing, or visit www.perucoffeecom where interesting information can be found as well.

    Posted 10 January 2005

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