Be it Napa Valley wine or Swiss chocolate, geographical names carry a unique charm and market value. However, when it comes to trademarking them, the rules are not as straightforward as slapping a label on a product. Some names are fair game, while others are off-limits, sparking debates about intellectual property, fairness and public perception. The question that arises is whether a business owner can successfully trademark a geographical name and claim exclusive rights over it.

Position in India

The trademarking of geographical names in India is considered in Section 9(1)(b) of the Trademarks Act, 1999, which prohibits registration of marks that consist exclusively of marks or indications which may serve in trade to designate the geographical origin of goods or services. Interestingly, this provision is accompanied by a proviso which allows a mark to be registered if it has acquired distinctive character through extensive use or is well-known. In other words, if the mark has acquired secondary meaning to be associated widely and solely with the respective business, it may be considered for registration.

Over the years, Indian courts have developed a few guiding principles pertaining to this issue. One such principle is that there exists a distinction between marks consisting exclusively of geographical names, and composite marks incorporating geographical elements. The Delhi High Court in Abu Dhabi Global Market v. The Registrar of Trade Marks, Delhi, 2023 SCC OnLine Del 2947, clarified that Section 9(1)(b) only prohibits marks consisting exclusively of geographical indications, and that composite marks incorporating such names are generally registrable.

Certainly, one practical consideration while evaluating country names as trademarks is the connection between the goods or services, and the country name, and whether there is likely to be a consumer perception of association of the goods or services with that geographical location. Therefore, the existing reputation of the location for the relevant goods or services could be a crucial consideration. For example, the registration of a mark such as “Russian Vodka” would likely be unsuccessful, owing to the well-known association  between vodka and Russia, in the minds of vodka consumers. A similar example could be “French Champagne”. At the same time, however, there are several trademarks on the register for such marks, e.g., “Bombay Sapphire”, “American Eagle”, “India Gate”, “London Dairy”, “Swiss Beauty”, etc. This is perhaps because the Trademark office was satisfied the likelihood of association of the goods or services with the respective geographical location is low, owing to the lack of any likely nexus between London and dairy products, Bombay and gin, and so on.

Position in EU

A similar issue is being adjudicated upon by the General Court of the European Union in Iceland Foods Limited v. European Union Intellectual Property Office, T-105/2023 and T-106/2023, where the validity of the registration of the mark “Iceland” is being examined. These are appeals filed by Iceland Foods Limited, a United Kingdom based supermarket chain, owing to the EUIPO Cancellation Division’s invalidation of its trademarks for all its goods, from parts and fittings for dishwashers and toilet paper, to tapioca and sago.

The International Trademark Association, in its intervention application, has emphasized that Article 7(1)(c) of the European Union Trademark Regulation places geographical indications in the same category as other potentially descriptive terms, requiring a case-by-case assessment rather than automatic rejection. This intervention application also highlights the 1999 landmark case of Windsurfing Chiemsee Produktions-und Vertriebs GmbH (WSC) v. Boots- und Segelzubehör Walter Huber and Franz Attenberger, C-108/97 and C-109/97, which established that geographical names can be registered as trademarks unless they are specifically associated with the claimed goods or services in the minds of consumers. This case dealt with the registrability of the mark “Chiemsee”, which is the name of the largest lake in Bavaria, Germany.

In its intervention application, the International Trademark Association represents more than just support for a particular trademark owner; it seeks to maintain a balanced and predictable framework for geographical indications in European trademark law, as opposed to insurmountable barriers to trademark registration based solely on the fact that it is a geographical name.

This issue is also presently sub-judice in an ongoing appeal before the Delhi High Court in Promoshirt SM. SA. V. Armasuisse & Anr., 2023 SCC OnLine Del 5531 where the primary question is the registrability of the mark “Swiss Military” in relation to goods under class 25, i.e., clothing, footwear, headgear, etc.

Conclusion

Clearly, an association of the goods or services with the respective geographical location seems to be a key consideration in evaluating the registrability of a trademark with a geographical name. Trademarking a geographical name requires careful consideration – while some can be successfully trademarked, others remain off-limits to prevent monopolization. As businesses continue to explore creative ways to stand out, the debate over geographical names will remain a fascinating intersection of law, commerce and culture.