27 May 2010 Revised 27 Sep 2017
A“geographical indication” is defined as a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin (see the "Geographical Indications" page of the WIPO website). The 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. Examples include “Scotch” for whisky from Scotland, “Champagne” for sparkling wine from the Champagne region of France and “Parma” ham for dry-cured ham from the Parma region of Italy.
States that belong to the World Trade Organization are required by art 22 (2) of TRIPS (Annex 1c to the WTO Agreement) to
“provide the legal means for interested parties to prevent:There is additional protection under art 23 of TRIPS for the geographical indications of wines and spirits.
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).”
Art 10bis is mentioned in the introduction to passing off. “Indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods” are prohibited in particular by art 10 bis (3) (iii).
Implementation of those Treaty Obligations
In the UK these obligations are implemented by:
- collective and certification marks;
- the extended action of passing off; and
- special European Union legislation for agricultural farm products and foodstuffs and wines and spirits.
These are special categories of registered trade marks. A “collective mark” may be granted to an association of suppliers. Its purpose is to distinguish the goods or services of members of the association from those of all other businesses. A “certification mark” is a mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012on quality schemes for agricultural products and foodstuffs 14.12.2012 L343/1 establish three kinds of legal protection for such products:
- protected designation of origin ("PDO"),
- protected geographical indication ("PGI"), and
- traditional specialities guaranteed ("TSG")
Products qualifying for such protection can be marked with a special quality logo. Other legislation protects geographical indications for wines, spirits and aromatized spirits.
Further ReadingContact Jane Lambert +44 (0)20 7404 5252
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