01 – FoundationsThe Relationship Between GI and Collective Trademarks

Several products that should qualify as GIs – such as Everest Big Cardamom and Juju Dhau – have instead been registered as collective trademarks. The reason is simple: Nepal has no dedicated GI law. That gap has let associations register and sell products a GI regime would protect better.

A GI and a collective trademark are, however, legally distinct, and the draft Industrial Property Bill, 2082 (“IP Bill”) treats them separately. Under Section 44, a collective trademark is a mark registered by an organisation whose members make similar goods or services and who alone may use it. Under Section 2(u), a GI is a sign, name, or map showing that a product comes from a particular place and owes its special quality, reputation, or character to that place. The two plainly serve different purposes – though an earlier draft, the IP Bill, 2076, blurred the line by putting the word “place” inside the definition of a collective trademark.

In short, a GI protects a product’s name and the reputation that comes from its place of origin, while a collective trademark protects only the mark used by producers who meet the group’s standards.

This confusion is not unique to Nepal. Around the world there are two ways to protect GIs: a dedicated (sui generis) GI system, or ordinary trademark tools. The clash between them – sometimes called the “War on Terroir” – divides two trade giants. The United States mainly uses trademark tools, chiefly the certification mark and, less often, the collective mark. The European Union prefers a separate, standalone GI system. The TRIPS Agreement allows both: a member may protect GIs through a sui generis regime or through trademark law.

Both rights protect goods and govern how marks are used in the market, so they can clash where a GI and a trademark look alike. As with the wider “War on Terroir”, different countries resolve such clashes differently.

In Mengozzi v EUIPO (Case T-510/15), the EU General Court held the trademark “TOSCORO” invalid for certain goods because it called to mind the protected GI “Toscano” – both used for olive oil. Here the GI won out over the trademark.

By contrast, in the Grana Padano case (EUIPO Fifth Board of Appeal, R-1073/2022-5), the Board held that a collective mark and a GI can both be protected at once, even where the logos are similar – so long as the mark has enough distinctive features for buyers to see that the goods come from producers authorised to use it.

Even so, the prevailing view is that GIs and collective trademarks remain separate rights. Where countries do protect GIs through trademarks, they treat registration as a stopgap until a proper GI system exists – not as proof that the two rights are the same or interchangeable.

02 – OwnershipWho Owns a Geographical Indication?

A further distinction, frequently overlooked, concerns ownership. A geographical indication is not “owned” by any single person, enterprise or association in the proprietary sense. It is a collective right attached to a defined territory: any producer operating within the designated region and complying with the product specification is entitled to use it, and the right remains a public, collective one even where the application is made by a single producer. This follows from the definition in the TRIPS Agreement:

“…indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” TRIPS Agreement, Article 22.1

TRIPS obliges members to protect against the misuse of such indications rather than to confer private ownership; WIPO likewise treats the right to use a GI as tied to origin and, unlike a trademark, not freely assignable or transferable.

A collective mark rests on a different premise. Legal title vests in the registering entity – the association or cooperative – and the mark signifies membership of, and compliance with the rules of, that body rather than geographical origin as such. The right is exercised through the proprietor association and is contingent on registration and renewal. In short, a GI belongs conceptually to a territory and its qualifying producers, whereas a collective mark belongs to the legal person that owns it.

This divergence has a concrete consequence in Nepal. Where origin-linked products – Ilam tea, Himalayan coffee, Mustang apples, Jumla Marshi rice, Palpa Dhaka – derive their value from place, registering them as collective marks vests control of what is essentially a territorial public asset in a single association. An eligible producer within the region who is not a member of that association may be excluded from a name that, under a GI regime, would be open to all qualifying producers in the territory. The collective mark thus risks privately appropriating a function that, in most jurisdictions, belongs to a dedicated GI system – which is precisely the sense in which the “place” may be misplaced.

“The collective mark risks privately appropriating a function that, in most jurisdictions, belongs to a dedicated GI system – precisely the sense in which the ‘place’ may be misplaced.”

03 – The ProblemIs the “Place” Misplaced in Protecting GI-Type Products Through Collective Trademarks?

When a product that should be a GI is protected only by a collective trademark, it misses the protections built specifically for GIs. The main concerns are:

04 – The Path ForwardIn Nepal

Collective trademarks alone are not always enough. Many traditional, region-specific products need a dedicated GI framework – especially when their value comes from where they are made.

Collective trademarks have done some of the work GIs are meant to do, such as signalling origin and preserving traditional methods. In practice the two have overlapped and run side by side.

Once Nepal has a proper GI law, collective trademarks will matter less as a substitute. They will still be useful, though: a collective trademark lets an association promise buyers a certain quality and set its own membership and quality rules. Where a GI mainly protects origin and reputation, a collective trademark lets a group control who uses the mark and how.

Once a GI law exists, some products should be protected as GIs rather than only as collective trademarks. A GI works differently: it protects a product’s name based on its origin and traditional qualities, and any qualifying producer in the area who meets the standards may use it – even without joining an association. Products like Ilam tea, Bhaktapur’s Juju Dhau and Jomsom apples fit a GI better, because their value comes from where they are produced, not from membership in a group.

05 – ConclusionA Shared Heritage, Properly Protected

Collective trademarks are a useful first step, but they cannot, on their own, fully protect origin-linked products. The forthcoming IP Bill should therefore establish and strengthen a complete geographical-indication regime, so that such goods enjoy protection that is more effective, more inclusive, and more lasting.

Properly framed, the argument is not that collective marks and geographical indications are identical, nor that collective marks cannot protect origin-linked products. WIPO itself recognises that GIs may be protected through a sui generis system, through collective or certification marks, or through the law of unfair competition. The difficulty is narrower, and particular to Nepal: the Collective Mark Registration-Related Directive, 2067 has come to function as a surrogate for GI protection – a de facto geographical-indication regime operating without the territorial reach, the public-interest orientation, the producer-community dimension, the institutional structure, or the legal certainty that a dedicated GI regime supplies.

The deeper concern is one of belonging. The reputation of a place is a collective asset: it belongs to the community and to every qualifying producer of that origin, not to any single enterprise. Where that reputation is captured exclusively by one association or interest group through a collective mark, the name of the place is, in effect, privatised. Should a dedicated GI regime later be introduced, this mismatch is likely to breed disputes and litigation between incumbent mark-holders and the wider body of producers – and, at worst, a place may find its name permanently lost to a narrow interest. For that reason, the new IP Bill must do more than create a GI system in the abstract. It should expressly bridge the existing collective-mark framework and the incoming GI regime – providing for the orderly transition, coexistence, or conversion of subsisting collective marks, resolving questions of priority, and ensuring that the shift from one regime to the other does not entrench private control over what is, properly understood, a shared territorial heritage.