Geographical Indications after Brexit

Stilton Cheese

Author Dominik Hundhammer

Licence Creative Commons Attribution-Share Alike 3.0 unported

Source Wikipedia

Jane Lambert

According to the WIPO 

"A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production."

As I noted in Geographical Indications 27 May 2010 parties to the WTO Agreement are required to protect such signs by arts 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and art 10bis of the Paris Convention.

As I also noted in Geographical Indications HM government discharges those international obligations through trade mark law, the action for passing off and special EU legislation.  The EU legislation will cease to apply to the UK after 29 March 2019 except to the extent that it is preserved by s.2 and s.3 of the European Union (Withdrawal) Act 2018.

Paragraph 39 of the white paper on The future relationship between the United Kingdom and the European Union states:

"The UK will be establishing its own GI scheme after exit, consistent with the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). This new UK framework will go beyond the requirements of TRIPS, and will provide a clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK. The scheme will be open to new applications, from both UK and non-UK applicants, from the day it enters into force."

If the UK leaves the EU with a withdrawal agreement the legislation for this new scheme will be passed in the implementation period that will subsist between 30 March 2019 and 31 Dec 2020.

On 24 Sept 2018 the government published Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal setting out its proposals for protecting geographical indications if there is no withdrawal agreement:

"When we leave the EU we will set up our own GI schemes which will be WTO TRIPS compliant, broadly mirror the current EU regime and be no more burdensome to producers. Details to be explored in a public consultation include the UK GI logo and appeals process. The protections will be similar to those enjoyed now by UK GI producers, with all 86 UK GIs given new UK GI status automatically. The UK would no longer be required to recognise EU GI status. EU producers would be able to apply for UK GI status. We will be publishing guidance on the UK GI schemes in early 2019."

HMG expects the EU to continue to protect British products after Brexit but, should that not be the case, it advises producers to apply for GI protection as third country producers or the registration of their signs with the EU Intellectual Property Office as collective or certification marks,

Anyone wishing to discuss this article or geographical indications generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Auntie Jane's Trade Mark Tips: No. 3 - Where to find the Law

Wildy's Book Shop

Photo Elisa Rolle
Creative Commons Attribution-Share Alike 4.0 international licence
Source  Wikipedia

Updated 23 May 2022

Jane Lambert

Obviously, you find law in a law book and you find law books at a legal bookseller.  And here's a picture of one that is nearly 200 years old. Wildy & Sons positioned strategically between the Royal Courts of Justice and the barristers and other legal professionals of Lincoln's Inn is one of the sights of London. It is almost next door to The Seven Stars, one of the best and oldest pubs in London.

But I digress.  This is what you could ask for were you ever to visit Wildy's.

In Auntie Jane's Trade Mark Tips No 2, I told you about Briitish trade marks which protect brands in the UK only and EU trade marks which protect them throughout the whole of the European Union.

The law that governs British trade marks is the Trade Marks Act 1994. That Act has been amended several times since it was first enacted and you can find a convenient though unofficial consolidation on the IPO website at Unofficial Consolidated versionTrade Mark Act 1994 as amended.  The Act allows ministers to make rules for the operation of the Act which you will find in Consolidated Trade Mark Rules on the same website.  Our Act was passed to give effect to the Trade Mark Directive (Directive 2008/95/EC) which is the ultimate source of our trade mark legislation.

The law that governs EU trade marks is Council Regulation (EC) No 207/2009 of 26 Feb 2009 ("the EU Trade Mark Regulation"). If you compare the Regulation with the Directive you will find many similarities. That is not surprising because both sets of legislation were made by the European Council and both need to comply with international agreements such as the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS").

From time to time disputes arise as to the meaning and effect of the above legislation which sometimes go to court. The ultimate authority on EU law is the Court of Justice of the European Union. The highest court of the United Kingdom is the Supreme Court.  Important decisions are also made by the Senior Courts of England and Wales, their equivalents in Scotland and Northern Ireland and IPO hearing officers.  You will find most of the relevant decisions on the British and Irish Legal Information Institute ("BAILII") website.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.