Geographical Indications – What are they and what do you need to know?

What are Geographical Indications?

Geographical Indications (GI) are a particular type of mark for agricultural products and foodstuffs, wines and spirit drinks, and is used to signal that goods come from a particular geographical location or have particular characteristics that relate to that geographical area. 

You will no doubt be aware of many GIs, but you may not be aware that they are registered GIs and thus protected signs.  For example, most people are aware of CHAMPAGNE, STILTON BLUE CHEESE and SCOTCH WHISKY.  However, you might not expect SCOTTISH SALMON, TAISHU SOBA or CORNISH PASTY to be registered GI’s.

There are three different types of GI:

1. Protected Designations of Origin (PDO) – which cover goods, where all of the constituents and steps taken to make them come from or take place in the geographical area- for example, PROSECCO,

2. Protected Geographical Indications (PGI) – which cover goods that are processed in some way in the relevant geographical area – for example, YORKSHIRE WENSLEYDALE and

3. Protected Names – which related to wines or spirits, for example TEQUILA.

In the United Kingdom there is also an additional category for |Traditional Speciality Guaranteed (TSG), for example, Jamón Serrano, Wiltshire Cured Ham or Mozzarella.

GI’s are only word marks, so there are no aspects of stylisation or devices elements to these marks.  However, there are a surprisingly large number of GI’s.  On the UK register of Protected Geographical Food and Drink Names there are well over 5,000 registered names.

Not all GI’s are place names.

How do you register a GI?

GI’s can be held by producer associations from the relevant geographical area.  When applying to register a GI, you will need to identify the mark and the product category, and provide a product Specification which will set out the history of the mark and product, each step involved in making a product (for a PDO these must all be in the relevant geographical area), a description of the geographical area and the link with the geographical area, labelling requirements, evidence of third party recognition and who controls the use of the mark. Once registered, the Specification is publicly available on the register and is intended to clearly set out the requirements for use of the GI.

If the application is accepted, there is an opposition period, which allows third parties to object to the application.  Once registered, GI’s do not need to be renewed like trade mark registrations, but anyone with a legitimate interest can apply to cancel a GI if the product has not been produced for 7 years or if the product does not comply with its specification.

A UK GI registration provides protection in England, Scotland and Wales.  Producers in Great Britain will need to secure protection under the UK GI schemes before applying to the EU schemes to protect a product name in Northern Ireland or the EU.  DEFRA (Department for Environment, Food & Rural Affairs) is responsible for administering GI’s in the UK, whereas the European Commission and the EUIPO are responsible for European GI’s.  The EUIPO has set up an innovation hub to provide information on GI’s.

Not all countries recognise GI’s as a separate type of mark, but many that don’t have a separate register of GI’s, do allow registration as a Certification Mark. 

What if you want to use a GI?

In the UK you will need to (i) follow the published product specification, (ii) be verified to make and sell the registered product and (iii) use the registered GI product name correctly.

What does this mean for you?

Given the large number of GI’s and the surprising range of signs registered, it would be prudent to consider including GI’s in your trade mark searching when you are choosing a new brand.  GI’s can be relied upon to oppose a trade mark application, and of course GI’s can be infringed.

In addition to the wide range of marks that are protected as GI’s, there are number of different ways of infringing a GI.

Unsurprisingly a GI will be infringed if an unauthorised party uses the mark, or a similar mark for the goods for which it is registered.  However, a product may also infringe a GI if it evokes the impression of that GI, even if it doesn’t explicitly use that word mark.  A GI may be evoked by using associated words, for example, use of WEST COUNTRY with PASTY may be considered to evoke CORNISH PASTY.  Although a GI is not registered for a figurative mark, use of figurative elements may evoke a GI.  For example, use of an image of Swiss mountains, may evoke a Swiss GI.  Infringement by evocation will depend very much on the goods or service and on the manner of use. 

Furthermore, a product may infringe a GI if looking like a protected product.  For example, a product that has the shape or aspects of the appearance of a protected product may be considered to be liable to mislead the consumer as to its true origin.

In addition, use of a GI for services may also infringe a GI.  The product or services do not need to be identical or similar to the goods for which the GI is registered, it just requires the manner of use of the name to create a direct link between the name and the GI in the mind of the average consumer.

It you produce a product that includes or uses a product protected by a Geographical Indication, you may still not be entitled to use the GI in your product name or marketing. To justify use of a GI, the end product must have sufficient similarity with the product defined in the GI.  So, for example, inclusion of an incidental amount of a GI protected product in your product may not be sufficient to enable you to use the GI, since the end product is unlikely to be very similar to the product defined in the GI.  Even if your product contains a significant similarity with product defined in the GI,  consideration should still be given to ensuring the use made would not be detrimental to the GI.

This illustrates that it is important not just to consider the words of the GI, but the nature and appearance of the product covered by the GI and key elements of the geographical area relating to the GI when considering whether your product may mislead a consumer and therefore infringe the GI.  It is also important to consider GI’s even for service marks.

From 2025, Geographical Indications will also be available for craft and industrial products, to establish an EU-wide protection system for the name of locally renowned crafts and industrial products.  At present, there is no UK equivalent.