Trademarks and Geographical Indications

170 Pages·2017·1.6 MB·English

WWeesstteerrnn UUnniivveerrssiittyy
SScchhoollaarrsshhiipp@@WWeesstteerrnn
Electronic Thesis and Dissertation Repository
8-16-2012 12:00 AM
TTrraaddeemmaarrkkss aanndd GGeeooggrraapphhiiccaall IInnddiiccaattiioonnss:: CCoonnflfliicctt oorr
CCooeexxiisstteennccee??
Melissa A. Loucks, The University of Western Ontario
Supervisor: Dr. Margaret Ann Wilkinson, The University of Western Ontario
A thesis submitted in partial fulfillment of the requirements for the Master of Laws degree in
Law
© Melissa A. Loucks 2012
Follow this and additional works at: https://ir.lib.uwo.ca/etd
Part of the Intellectual Property Law Commons
RReeccoommmmeennddeedd CCiittaattiioonn
Loucks, Melissa A., "Trademarks and Geographical Indications: Conflict or Coexistence?" (2012).
Electronic Thesis and Dissertation Repository. 850.
https://ir.lib.uwo.ca/etd/850
This Dissertation/Thesis is brought to you for free and open access by Scholarship@Western. It has been accepted
for inclusion in Electronic Thesis and Dissertation Repository by an authorized administrator of
Scholarship@Western. For more information, please contact [email protected].
TRADEMARKS AND GEOGRAPHICAL INDICATIONS:
CONFLICT OR COEXISTENCE?
(Spine title: Trademarks and Geographical Indications)
(Thesis format: Monograph)

by

Melissa Ann Loucks
Graduate Program in Law

A thesis submitted in partial fulfillment
of the requirements for the degree of Master of Laws

School of Graduate and Postdoctoral Studies
The University of Western Ontario
London, Ontario, Canada
© Melissa A. Loucks 2012

i
CERTIFICATE OF EXAMINATION

Supervisor Examiners

______________________________ ______________________________
Dr. Margaret Ann Wilkinson Dr. Mohamed Khimji

______________________________
Dr. Mark Perry

______________________________
Dr. Mark Cleveland

The thesis by
Melissa Ann Loucks
entitled:
Trademarks and Geographical Indications: Conflict or Coexistence?
is accepted in partial fulfillment of the
requirements for the degree of
Master of Laws

Date__________________________ _______________________________
Chair of the Thesis Examination Board

ii
Abstract and Keywords
Both trademarks and geographical indications are legal devices which regulate
communication to markets about a product. Trademarks indicate the commercial origin
of a good or service while geographical indications signal the geographic origin. Both
tools also legally grant exclusive rights to certain uses of a word or symbol. Tension
arises when the tools overlap on the same subject matter. The thesis asks: is
coexistence between the devices in the TRIPS Agreement possible? Are the concepts of
trademarks and geographical indications related? If so, how? If not, how? Does the
marketing literature of business recognize both registered trademarks and geographical
indications as aspects of the same branding exercise?
The thesis finds that as trademarks and geographical indications are unique devices that
are not interchangeable and it is possible for legislation to simultaneously protect both,
trademarks and geographical indications are therefore not in conflict and can instead be
viewed as harmonious tools.
Keywords: intellectual property, trademarks, geographical indications, brand, World
Trade Organization, conflict, coexistence

iii
Dedication
This thesis is dedicated to Laurie and Tommy Mawlam, who taught me that facing
daunting challenges is as much about attitude as it is about perseverance.

iv
Acknowledgements
I would like to thank Professor Margaret Ann Wilkinson for her guidance, inspiration
and enthusiasm. Professor Wilkinson’s infectious passion for learning encouraged
me to pursue graduate studies. I would also like to thank my second reader,
Professor Khimji and my examination committee as well as my fellow LL.M.
colleagues for their support. I also owe a tremendous amount of gratitude to my
friends and family who have been an unwavering source of strength during the
writing of this thesis.

v
Table of Contents:
CERTIFICATE OF EXAMINATION ii
Abstract iii
Dedication iv
Acknowledgments v
Table of Contents vi
List of Tables vii
List of Appendices viii
Chapter 1 1
The Classic Case of Budweiser 2
Prior Research 13
Thesis Organization and Research Questions 16
Methodology 18
Research Caveats 20
Defining Concepts 21
Conflict between Trademarks and Geographical Indications 22
Comparing and Contrasting Trademarks and Geographical 24
Indications
The Legal Framework 29
Chapter 2 41
‘Brand’ in Law 42
‘Brand’ as a Marketing Concept 47
Legal Concept of Trademark 51
Legal Concept of Geographical Indication 52
The Connection Between Trademark, Geographical Indication and 53
Brand from a Business Perspective
The Attitudes of New and Old World Tension Authors Towards 55
Geographical Indications
Chapter 3 59
The World Trade Organization Dispute 59
Arguments by the Parties 66
Interpretation of the World Trade Organization Dispute Outcome 80
Budweiser UK Litigation 80
Chapter 4 96
Sources of Conflict and Confusion between Geographical 97
Indications and Trademarks
Reasons for Conflict 97
Rhetoric of the Conflict 104
Conclusion 113
Appendices 124
Bibliography 138
Curriculum Vitae 145

vi
List of Tables
Table 1: Summary of Marketing Literature Search Results 20
Table 2: Legal Dictionary Definitions of ‘Brand’ 43
Table 3: Marketing Definitions of ‘Brand’ 47
Table 4: Author’s Country of Residence 57
Table 5: Comparison of Regulation Article 14.2 and the TRIPS 64
Agreement Article 16.1
Table 6: United Kingdom Trademark Applications for ‘BUDWEISER’ 87

vii
Appendices
Appendix A EC Regulation 2081/92

Appendix B Search Terms: ‘trademark’ and ‘brand’
Database: Business Source Complete

Appendix C Search Terms: ‘trademark’ and ‘brand’
Database: ABI/INFORM Global

Appendix D Search Terms: ‘geographical indication’ and ‘brand’
Database: ABI/INFORM Global

Appendix E Search Terms: ‘geographical indication’ and ‘brand’
Database: Business Source Complete

viii
1
Chapter 1
“The TRIPS Agreement1 is the first multilateral text dealing with geographical
indications as such, and may be rightly considered an important first step in this difficult
field.”2 In addition to introducing geographical indications into an international
agreement, the TRIPS Agreement provides for co-existence of geographical indications
and trademarks. ‘Trademarks’ and ‘geographical indications’ are legal devices which
regulate communication to markets about a product. Trademarks indicate the
commercial origin of a good or service while geographical indications signal the
geographic origin of a good.3 Both tools also legally grant exclusive rights to certain
uses of a word or symbol.4 Tension arises when the tools overlap on the same subject
matter.5 While both devices act as a means of source identification to consumers, are
they equivalent devices in law? What is industry’s perspective? If trademarks and
geographical indications are equivalent, why is protection of geographical indications a
source of contention as the World Trade Organization seeks to expand the categories of
goods subject to geographical indication protection? Does the answer to rights

1 WTO Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, 331197, online:
WTO <www.wto.org/english/tratop_e_trips_e/t_agmo_e.htm> [TRIPS Agreement]. Note that this citation
is not part of the original quote.
2 Daniel Gervais & Elizabeth Judge, Intellectual Property: The Law in Canada, (Toronto: Thomson Canada
Limited, 2005) at 550.
3 Dev Gangjee, “Quibbling Siblings: Conflicts Between Trademarks and Geographical Indications” 82
(2007) Chi.-Kent L. Rev. at 1255.
4 Ibid at 1258.
5 Dev Gangjee, “Say Cheese! A Sharper Image of Generic Use Through the Lens of Feta” 5 (2007) Eur. I. P.
Rev. at 172.