Intellectual Property in Scotland
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In Scotland, no less than 15 Geographical Indications (GIs) are recognised. Testimony of the unique influence of the Scottish diverse geographical environment, they certainly contribute to establish Scotland’s worldwide reputation in the Food and Drink (F&D) sector.
But what is a GI? How does it work and how are they protected in the UK? This article will delve into the rules of UK GI law and its consequences for producers and brand owners in the Food and Drink (F&D) sector.
The UK GI Scheme: its relationship with the EU since Brexit
GIs form a branch of Intellectual Property (IP) Law which typically applies to foodstuffs, wines and spirit drinks products exhibiting distinctive qualities due to their geographical environment of origin.
In the UK, the protection of GIs is ensured under the UK GI Scheme, whose main source of inspiration is European. Indeed, the UK GI Scheme is still governed by a series of former EU Regulations:
- Regulation (EU) No 1151/2012 (for foodstuff);[1]
- Regulation (EU) No 1308/2013 (for wines);[2]
- Regulation (EU) No 251/2014 (for aromatised wines);[3]
- Regulation (EU) No. 2019/787 (for spirit drinks) [4].
The UK GI Scheme also “retained” all European case law before “IP Completion Day” (31 December 2020, 11 pm).
As part of the EU-UK Withdrawal Agreement (Article 54), the UK agreed to recognise as UK GIs all GIs protected in the EU before December 2020. After this date, GI owners who benefitted from GI protection in the EU therefore found themselves in possession of two sets of IP rights, one valid in the EU and the other valid in the UK.
Nowadays, however, an applicant looking for protection in the UK and the EU will need to apply for protection in both jurisdictions separately. Note that, as part of the EU-UK Withdrawal Agreement, it was decided that a UK GI would only cover Great Britain and not Northern Ireland, which is instead covered by an EU GI.
Importantly, an application for an EU GI by a UK-based producer can only be made after GI protection has been granted in the UK. Any EU GI application needs to be addressed to the European Commission as the competent authority for GIs originating from a third country (i.e. outside the European Union).
If the inspiration behind current UK GI law is indeed European, practices may diverge in the future through the evolution of legislation and case law in the UK and EU jurisdictions respectively. Importantly, the new reforms brought about in the EU by Regulation (EU) 2023/2411 on the protection of geographical indications for craft products, and by Regulation (EU) 2024/1143 for wines, spirit drinks, and agricultural products, are not applicable in the UK. As things stand, therefore, there is no GI protection scheme for craft products in the UK.
The UK GI scheme: the application process
The Department for Environment, Food & Rural Affairs (DEFRA) is the competent authority in charge of the UK GI Scheme, and separate departments exist to assist applicants in England, Scotland, Wales and Northern Ireland.[5]
Most commonly, applicants are a group of producers coming together, but individual applicants may also be eligible.
There are slight differences in the application requirements depending on the category of GIs.[6] All GI applications, however, must include the following:
· a product specification: this document contains crucial information about the GI product, such as its name, its description, its production methods, the definition of the geographical area and, very significantly, its connection with the geographical area - also called the “origin link” and without which GI protection cannot be granted.[7]
· supporting evidence: the applicant needs to demonstrate that the information contained in the product specification is accurate and objective by submitting elements of proof (records, maps, scientific assessments, etc.).
· a single document: it is essentially a summary of the product specification.
In the case of GI foodstuffs (which includes beer and cider), wines, and aromatised wines - but not spirit drinks) - two sub-categories of GIs exist, each with a different threshold to qualify. The label Protected Designation of Origin (PDO) applies to products which are produced, processed and prepared in the geographical area of origin, whereas the label Protected Geographical Indication (PGI) only requires at least one important stage of preparation to happen in the geographical area of origin (production or processing or preparation).
Once submitted to DEFRA, the application is examined.
If accepted, the application is published so third parties can raise any objections within 3 months of the publication date, by submitting a “reasoned statement of opposition”. In the case of any objections, a 3-month period follows during which parties can work together to resolve the issue and potentially amend the product specification.
DEFRA makes the final decision in case parties cannot reach a compromise.[8] In case the application is refused at any stage, the applicant has a right to appeal.[9]
Once accepted, the GI name is included on the UK GI registers, accessible online.[10]
Note that the protection of the so-called traditional specialities under the Traditional Speciality Guaranteed (TSG) label is included in the UK GI Scheme. This category is different from GIs as it exclusively targets products without any connection to a specific geographical area. To qualify to the TSG category, a product must have a traditional name in use for 30 years or more, and it must be produced using traditional methods or recipe.
The UK GI Scheme: compliance
Once registered, a GI can only be used by the producers who comply with the production requirements and who operate in the geographical area strictly delimited in the product specification. The GI is a collective right; the producers cannot prevent a newcomer respecting the requirements to use the GI, no matter how long they may have been producing the GI product.
In the marketing of their product, the GI producers are entitled to combine the GI name with their brand’s name. Furthermore, producers of a GI foodstuff must use the UK GI logo on the labelling of their product (see below). The logo is, however, optional for GI wines and spirit drinks.
Figure 1: The protection labels under the UK GI Scheme: PDO, PGI and TSG. Source: UK Government.
Compliance mechanisms must be put in place to ensure that the GI products are produced according to their respective GI specifications. This typically entails the presence of a control body in charge of conducting adequate compliance checks.
The scope of UK GI protection
In a precedent article on the GI Scotch Whisky, we already explored the scope of UK GI protection and showed how extensive it can be, especially when compared to the scope of UK trade mark protection.[11]
Not only does UK GI protection rules tackle direct or indirect commercial use of the GI (name), but they also prohibit any misuse, imitation, or evocation of the GI. This has been previously interpreted as covering not only any reference to, or association with, the GI name but to the GI product in general.
Enlightening in this regard is the generous interpretation of the concept of evocation by the EU courts:
· “Cambozola” was deemed to be an evocation of “Gorgonzola” due to its phonetic and visual proximity.[12] Similarly, the use of “Verlados” was prohibited for a liquor because of its proximity with “Calvados”.[13]
· The word “glen” for a German whisky was judged an evocation of the GI Scotch Whisky due to its linguistic and commercial association with Scotland – “glen” meaning “valley” in Scottish Gaelic and being a common occurrence in many Scotch Whisky’s brand names .[14]
· A representation of Don Quixote on his horse Rocinante (emblems of the Mancha region) was considered a figurative evocation of the GI “Manchego Cheese” due to its strong cultural connection with the GI geographical area.[15]
· The CJEU prohibited a company to produce a cheese having a middle dark line as this recalled a “baseline characteristic” of the GI “Morbier” which was “particularly distinctive of that product”. It therefore constituted an evocation of the GI product.[16]
As these case law pre-date “IP Completion Day”, they remain in principle fully applicable in UK courts.
The fact that GI protection is so extensive in the UK should motivate business owners operating in the UK, and in the Food and Drink (F&D) sector especially, to be particularly cautious when designing their trade mark and branding strategy. The occasions to be liable for misuse or evocation of an existing GI are more common than it seems.
Conclusion
· GI protection is only granted to a product presenting distinctive qualities or reputation due to its connection with its geographical environment of origin.
· Most of the rules and case law applicable to UK GIs come from the European Union and have been retained after Brexit.
· The UK GI Scheme does not extend to Northern Ireland, which is covered by the EU GI system.
· There are three different UK GI categories, each with their own requirements: foodstuffs (covering beers and ciders), wines and spirit drinks.
· A GI can only be used by the producers who comply with the production requirements and who operate in the geographical area strictly delimited in the product specification.
· The scope of GI protection in the UK is likely to be interpreted along the lines previously set by EU case law, which consecrated a conception of GI protection especially favourable to GI-holders. It covers not only any (direct or indirect) reference to, or association with, the GI name but to the GI product in general.
Author: Alix de La Motte-Broöns
Further advice
For further advice, please contact the trade marks team at Hindles.
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[1] See : Regulation No 1151/2012 of 21 November 2012 (Retained EU Law version).
[2] See: Regulation (EU) No 1308/2013 of 17 December 2013 (Retained EU Law version).
[3] See: Regulation (EU) No 251/2014 of 26 February 2014 (Retained EU Law version).
[4] See: Regulation 2019/787 of 17 April 2019 (Retained EU Law version).
[5] For more details, see here: Protect a geographical spirit drink name - GOV.UK.
[6] For the specific requirements per category, see online: foodstuffs which include food, beer and cider; wines and aromatised wines; and spirits.
[7] The templates can be found here: Apply for PDO or PGI protection on a food or drink name - GOV.UK
[8] See online for more details: Protected geographical food and drink names: applications, objections and decisions - GOV.UK
[9] See here for more details: Appeal against decisions on UK protected geographical food and drink names - GOV.UK
[10] Access the registers here: Protected geographical food and drink names - GOV.UK
[11] The provisions applicable to GI protection can be found respectively in:
- Article 13 of Regulation No 1151/2012 (Retained EU Law version);
- Article 103 of Regulation (EU) No 1308/2013 (Retained EU Law version)
- Article 20 of Regulation (EU) No 251/2014 (Retained EU Law version).
- Article 21 of Regulation 2019/787 (Retained EU Law version).
[12] CJEU, Consorzio per la tutela del formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH & Co. KG and Eduard Bracharz GmbH (4 March 1999), C-87/97.
[13] CJEU, Viiniverla Oy v Sosiaali- ja terveysalan lupa- ja valvontavirasto (21 January 2016), C-75/15.
[14] CJEU, Scotch Whisky Association v. Michael Klotz (7 June 2018), C-44/17.
[15] CJEU, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera Cuquerella SL and Juan Ramón Cuquerella Montagud (2 May 2019), C-614-17.
[16] CJEU, Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS (17 December 2020), C-490-19.