Geographical Indications: Definition And Protection Tools
On one hand, Geographical Indications (GIs) represent a tool to give value to products, while on the other they are a guarantee for consumers about the origin, the characteristics and/or the reputation of the purchased products, which are manufactured in compliance with certain product specifications.
Sui generis protection systems for GIs in the EU
Among food GIs protected in our system there are both Protected Designations of Origin (PDOs) and Protected Geographical Indications (PGIs), which are subject to specific rules in the EU since 1992 and are currently regulated by the EU Regulation n. 1151 of 2012.
With more than 290 food products registered (sulla frase “food products registered” mettere link: https://www.politicheagricole.it/flex/cm/pages/ServeBLOB.php/L/IT/IDPagina/396), Italy is the leading country in the EU for number of PDOs and PGIs, spread out all over the national territory. Among these, it’s worth mentioning for example the PDO Prosciutto Toscano and the PGI Finocchiona.
In this context, the regulation provides for sui generis protection systems for geographical indications, which is wider than trademarks and other distinctive signs’ protection.
In fact, according to art. 13, clause 1, of the EU Regulation n. 1151/2012, PDOs and PGIs registered in the EU have to be protected against:
- any commercial use in respect of the products not covered by the registration, where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient;
- 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, including when those products are used as an ingredient;
- any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;
- any other practice liable to mislead the consumer as to the true origin of the product.
Moreover, according to art. 13, clause 2, contrary to trademarks, both PDOs and PGIs do not become generic.
In particular, art. 14 of the EU Regulation n.1151/2012 on one hand rejects the possibility to register a trademark after an application for a PDO or a PGI, if such registration is in contrast with the statements of art. 13. But on the other hand, it calls for the chance to register a PDO or a PGI even though there are prior rights and, in this case, the owner of the previous trademark can continue to use and renew the same, as long as there are no reasons for nullity or cancelation, according to the Trademark Regulation.
In parallel to the regulation regarding PDOs and PGIs, both the EU Regulation n. 1001/2017 regarding the EU Trademarks and the Italian Industrial Property Code (IPC) establish that any sign conflicting with PDOs and PGIs cannot be registered as trademark and therefore Trademark Offices finding such impediment while examining applications shall refuse the registration.
Moreover, the EU Trademark Regulation reform, in force since 2017, together with the recent IPC’s reform (Legislative Decree 15/2019), introduced the possibility to file oppositions against trademarks in conflict with PDOs or PGIs having effect before the trademark subject to opposition was filed.
Therefore, the conflict of a trademark with a previous PDO or PGI can be considered as both an absolute and a relative impediment to registration, which will be enforced by authorized subjects to protect the rights related to Geographical Indications, in compliance with the Italian and EU Regulation.
GIs protection outside the EU
Outside the EU, there are only a few countries acknowledging sui generis protection systems for Geographical Indications, which are often considered – like in the US for example – as a trademark category and can possibly benefit from a more specific protection with the registration as collective or certification marks, according to the procedures laid down by the local trademark law.
In the context of international trade, it was expected that a crucial turning point for geographical indications protection occurred with the conclusion of TRIPs Agreement – Agreement on Trade Related aspects of Intellectual Property rights – in 1994, being one of the attachments of Marrakech Treaty instituting the WTO (World Trade Organization).
TRIPs Agreement defines a minimum protection level of GIs for food products within WTO’s member states, leaving up to them the obligation to prevent the improper use of Geographical Indications, if there is a real danger that such incorrect use misleads the consumer.
Moreover, the agreement establishes to initiate either multilateral or bilateral negotiation to extend and strengthen GIs protection.
However, the weakness of the protection provided for by TRIPs Agreement compared to the EU standards made the EU rather inclined to conclude agreements outside the framework of the Union. Therefore, in order to improve GIs protection, the EU has concluded specific stand-alone agreements about Geographical Indications and, most of all, free trade agreements (FTAs) over the years.
In this framework, the main goal reached so far by the EU for GIs protection is the free trade agreement between EU and Canada, that is to say the Comprehensive Economic and Trade Agreement (CETA). In fact, according to it, Canada shall guarantee to EU GIs – as indicated in the attachment 20 A of said agreement – a strengthened protection, which is very similar to that sui generis one belonging to our system.
Moreover, the new Canadian Intellectual Property Law has recently introduced a procedure to acknowledge more GIs for food products in Canada, which were previously considered for alcoholic drinks only.
Collective marks and certification marks: a complementary or additional protection for GIs
Another protection tool – a private law-type one – for Geographical Indications is the registration of the names corresponding to GIs as collective marks or, depending on the local regulation in the area of interest, as certification marks.
In fact, parallel to the sui generis protection system or instead of it – in those countries where such protection is not provided for by the local regulation – the registration of the name as collective mark/certification mark can be useful to limit counterfeiting events and therefore strengthen GIs protection.
In this regard, it is important recalling that almost all trademarks regulations acknowledging the possibility to register these particular trademark types also establish that their ownership shall be given to associative legal entities (for example, consortia or producers’ organizations) which should be able to prove and be authorized to protect the GI’s rights when a trademark corresponds to a GI, according to the rules applicable in the country the GI is from.
Moreover, together with filing an application to register a collective mark/certification mark, the requesting parties should also file the so-called regulation of use defining, among others, the specific features and production procedures characterizing the products using such trademark.
Of course, EU GIs share the same production procedures, characteristics, geographical origin, etc. as those indicated in the PDO/PGI product specifications.
 EU Regulation n. 1151 of 2012 drafted by the EU Parliament and Council about quality schemes for agricultural products and foodstuffs.