The hidden pitfalls of Geographical Indications
Explore seven key tips for managing GIs, identifying the possible difficulties that you should be aware of.
Geographical Indications are highly valuable but they are not without challenges - understand how to navigate potential hurdles.
As we stroll through supermarket aisles, independent artisan shops and markets – both at home and overseas – we see a wealth of products bearing Geographical Indication (GI) marks.
Champagne, Roquefort, and Prosciutto di Parma are all mouthwatering examples that quickly come to mind. Closer to home, we have Stilton Cheese, Jersey Royals and Cornish Pasties.
But, if the products or services we work with don’t have their own Geographical Indications, the thought of them probably prompts nothing more than the craving for a snack.
However, we should pay more attention to GIs, says Venner Shipley’s David Birchall, because there are hidden pitfalls that a client’s products or services might fall into if we fail to consider them.
In a recent webinar, David – a Chartered Trade Mark Attorney and member of the Marques Committee for Geographical Indications, Designations of Origin – explained what those pitfalls are.
Geographical Indications – a quick recap
Geographical Indications, commonly known as GIs, are signs identifying that a good originates from a specific geographical area and possesses a given quality, reputation, or other characteristic attributable to that geographical origin.
There are three categories:
Protected Designation of Origin (PDO): the highest standard, this requires all steps taken to make the product to take place within the relevant geography.
Protected Geographical Indication (PGI): the product only needs to be processed in the relevant area to qualify.
Protected names: for wines or spirits.
GIs on the GB GI register are protected in England, Scotland, and Wales. They are word marks and, unlike conventional trade marks, they are issued by user associations.
Pitfall One: the sheer volume of GIs
There are 1722 GI registrations on the GB GI register (created following Brexit) in the category of foods alone.
Consequently, your client may wish to register an apparently innocuous name for a food product, but unless you search the GB GI register, you may not discover that it is infringing an existing GI. The sheer volume of GIs that are not as well-known as Champagne, for example, means it is prudent to check the register before you proceed.
How to avoid it: search the GB GI register when advising clients.
Pitfall Two: evocation through the use of associated words
A product may infringe an existing GI if it evokes the impression of that GI, even if it doesn’t explicitly mention the word mark.
David used the hypothetical example of a whisky called “Loch Maggiore Whisky”. While no mention of Scotch whisky is made, the Scotch Whisky Association could oppose the mark on the basis that the word “Loch” is Scottish in origin.
The EU legislation holds that: Registered names shall be protected against: (b) any misuse, imitation or EVOCATION, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar.
How to avoid it: beware of evocation through the use of words – avoid using terms linked to GI-protected areas in product names
Pitfall Three: evocation through figurative signs
It is also possible to infringe GIs through the figurative signs placed on packaging. If such signs are closely associated with production in that region their use may be judged to be confusing to consumers.
An example is the action launched by the owners of the PDO “Queso Manchego” – relating to cheese, against two cheese producers from Castilla-La Mancha who used images of a horse, or man on horseback, and a windmill on product packaging. These are associated with Don Quixote and his horse and, the court ECJ ruled that, although the word MANCHEGO was not used the packaging evoked the PDO, saying:
The use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.
How to avoid it: query the inspiration behind the figurative devices used on packaging.
Pitfall Four: infringement by appearance
If your client’s product bears visual similarity to a GI-protected product, be cautious. If the product mimics the shape or appearance of a protected product, this may be interpreted under the legislation as “(d)any other practice that is liable to mislead the customer as to the true origin of the product”. Consequently, it is vulnerable to challenge by the owners of the GI.
How to avoid it: Consider the shape and appearance of the product—it can be judged as infringing even if the GI product is not mentioned at all.
Pitfall Five: use on services can constitute GI infringement
Although GIs relate to products, using a protected GI for a service is not a safe option. In the case of a request for an injunction from the owners of the Champagne PDO against the use of “Champagnillo” for a bar in Spain, the ECJ ruled that:
“evocation” referred to in that provision, first, does not require, as a prior condition, that the product protected by a PDO and the product or service covered by the sign at issue are identical or similar and secondly is established where the use of a name creates a sufficiently clear and direct link between that name and the PDO in the mind of an average European consumer…
How to avoid it: beware of using GI terms in service names.
Pitfall Six: use on a different product can infringe
In 2011 a Dutch court ordered Unilever to stop selling “Andrelon Champagne” shampoo following the action of PDO Champagne. The court decided that Unliever was trading off the reputation of a geographical indication in its advertising. Therefore, even if a GI is protected for specific product only, use of a similar mark on other products can constitute infringement.
How to avoid it: avoid using GI terms in product names.
Pitfall Seven: just because it has the GI product in it doesn’t mean you can justify using the GI
In the case of Aldi’s “Champagner sorbet”, a dessert described as containing 12% champagne in its ingredients, the ECJ ruled that if the product tasted of champagne, then the GI could be legitimately used. Unfortunately for Aldi, the German court concluded that the product tasted of pear “followed by sugar, citric acid and a touch of alcohol,” and banned its use of Champagne.
How to avoid it: if a product contains a GI-protected ingredient, it must objectively taste of it before you risk using the term in the product name.
While many of these examples relate to the Champagne PDO and its well-resourced GI protection team, trade mark practitioners should be aware that there are many more GIs that could have an impact on their clients’ goods and services.
Watch the full webinar for more information.