What are GIs?

GIs are signs that designate certain products of quality and reputation with their place of production; an IP right that helps identify and distinguish these products on the market.

They are not usually owned by private businesses and are therefore unlike trade marks which serve as (business) source identifiers. Instead, they are usually owned by collectives or federations and they serve to identify where a product is from, with this place being synonymous with the product being of a high quality and reputation.

What happened in Jamaica?

The row in Jamaica is around changes to the GI for ‘Jamaican rum’ where they are changing what constitutes this product to only cover rum that is not just made in Jamaica but also aged there. In a similar vein, there is no GI for ‘Barbados rum’ because some distilleries there want the aging to happen in Barbados, but some want to manage that part of the process elsewhere.

The change in Jamaica – under challenge – effectively means the GI becomes an Appellation of Origin. These are a type of GI that identifies a product whose stages of production and processing are carried out in a defined place and uses long-standing knowledge. They originate from France – and Champagne is probably the most famous GI of them all – and refer to the terroir. This is the specific place a GI is from but a bit more than that; it doesn’t really translate exactly to English.

Let’s see if Jamaican rum must be aged in Jamaica going forward or if that part of the process can take place off the island with a Hearing scheduled for the end of April.

Closer to home 

The United Kingdom also has GIs. We inherited a lot from the EU on Brexit. This added a complexity to the situation where there is a different approach taken to GIs in Great Britain (England, Scotland and Wales) to Northern Ireland.

GI is a collective term to refer to Protected Designation of Origin (PDOs), Protected Geographical Indications (PGIs) and Traditional Specialities Guaranteed (TSGs). An example of each:

PDO: ‘Blue Stilton’ for cheese

PGI: ‘Scotch Beef’ in respect of fresh meat

TSG: ‘Traditionally Farmed Gloucestershire Old Spots Pork’ for pork and all products derived from the pig

In Great Britain, GIs are administered by the Department for Environment, Food and Rural Affairs (“DEFRA”) and therefore a different organisation than the Intellectual Property Office. They are not something the average Trade Mark Attorney is involved in registering.

However, they are important to consider in the clearance, registration and enforcement of trade marks in the food and drink industry.

In a trade mark application, a mark identical to a GI will be refused under provisions to protect GIs and also because it is descriptive and non-distinctive. It could also be deceptive if the goods did not come from the location associated with the GI.

If the mark contains a GI alongside other distinctive matter, it can be accepted if the goods are limited to those protected by the GI.

An example provided by the UKIPO is for NESCO Cornish Clotted Cream Goods filed in respect of “cream”. This could only be accepted if the specification was limited to “cream complying with the specifications of the PDO Cornish Clotted Cream”.

GIs are also protected from ‘misuse’, ‘imitation’ and ‘evocation’ and an example is again provided by the UKIPO: GERSEE ROYALTY for “potatoes”. As this brings to mind the PDO for ‘Jersey Royal potatoes’, objection would be raised to such an application.

While this is helpful Registry guidance, it would equally apply in the real world and use of marks identical or evocative of a GI could constitute infringement.

In terms of clearing marks for use, some commercial software allow for the searching of GIs and the EUIPO has developed the ‘GIview’ tool. You can search the UK Register too.

Internationally 

While the EU GI regime continued in the UK following Brexit, there are differences in the protection of GIs around the world.

WIPO administers the Lisbon System for the International Registration of GIs. However, with only 44 members it is not the most international of their agreements. The UK is not a member and nor are any major economies outside of Europe.

The United States does not have a GI registration system and instead protects them through trade mark law.

This can be through a regular trade mark, although ownership issues may exist.

Certification, Collective and Collective membership marks are available and may be more appropriate. A Certification mark provides a guarantee that the goods meet a certain defined standard or possess a particular characteristic. A Collective mark indicates that the goods originate from members of a trade association. A Collective membership mark – unique to the US, as far as I am aware – indicates membership of a trade association.

It can be challenging to obtain registration in the US if the trade mark contains geographic terms as these are grounds for refusal if they are geographically descriptive. It can require proving “secondary meaning” (or “acquired distinctiveness this side of the Atlantic) that consumers see the mark as indicating the collective source.

The US also protects marks in use through Common law.

Elsewhere, where GIs are not protected (either because such a registration system does not exist or because registration has not been sought), reliance can be made on Certification or Collective marks and unfair competition laws, including passing off in jurisdictions influenced by English Common law. Product regulations and labelling rules may also prevent misuse.

Even here in the UK, where a GI only covers Northern Ireland, you may still be able to obtain trade mark registration that may ‘misuse’ this if you limit it to Great Britain, or vice-versa.

Multi-layered IP protection

If we stay closer to home, albeit ‘North of the Border’, the Scotch Whisky is one of our most famous GIs. Distilleries in Scotland are able to benefit from the GI protection they have, which means parties from outside the region cannot call their product Scotch Whisky, with the reputation and qualities that comes with that, and they can also give their whisky distinctive brands that give them trade mark protection. While the brand owner would need to police their trade mark rights, the GI is vigorously policed by the Scotch Whisky Association on its members behalf. If my fading memory of IP history serves me correctly, it was the Scotch Whisky Association that was at the forefront of creating the trade mark watching industry through a now-departed company, Trade Marks Directory Service.

Having different IP rights in your weaponry can be very helpful. From GIs to regular or Certification or Collective marks, established goodwill, right through to design right or copyright that may subsist in the likes of packaging and bottle shapes. Expert advice can be sought in how best to use these in order to stop any misuse.

In the meantime, you may be feeling hungry or thirsty…