Geographical Indicators In The Trademark World
You may not have heard the term geographical indicator (GI) before. However, as soon as you read the word ‘champagne’, you will know exactly what it refers to. That’s right; fizzy wine cannot be called champagne unless it is produced in the Champagne region of France, meaning a GI protects it.
What is a geographical indicator?
A GI is a sign used to certify that products have a specific geographical origin and possess qualities or a reputation due to that particular place. GI’s are mostly used for food produce, wine, spirits, handicrafts and industrial goods.
Why are GIs significant?
Consumers are becoming more educated and are therefore more discerning about where their products come from. Concerns around climate change are encouraging people to buy from local producers. And products from certain geographical regions provide consumers with a heightened sense of value, for example, Italian leather goods and lace from Bruges.
What is the difference between a GI and a trademark?
A trademark can be applied to a name, symbol, smell, sound, or saying (for example, “make America great again”). A geographical area predetermines a GI.
Put simply, a trademark identifies a product coming from a particular company whereas a GI shows that a good originates from a particular region.
Because GIs are subject to misuse more than trademarks, thanks to the high value placed on them in the market, European Union (EU) regulations provide little scope for limitations and/or exceptions and provide blanket protection. Article 13(1)(b) of Regulation No 510/2006 explicitly protects registered names against any evocation, which can be understood as referring not only to words, but also to any figurative sign capable of evoking in the mind of the consumer products whose designation is protected.
An example of the strict approach taken by the Courts in protecting GI’s can be seen in the case of Wolf and Brew Ltd's Trade Mark Application (No.3215159), Re.
UK Court fails to see comedy in the term PAWSECCO
Although not an EUIPO case, the matter of Woof and Brew Ltd's Trade Mark Application (No.3215159), Re, provided guidance on dealing with trademarks associated with puns, parody, or artistic expression. The Trade Marks Registry (Appointed Person) concluded that a hearing officer had rightly upheld opposition to the registration of PAWSECCO as a trade mark for a pet drink product on the ground that it evoked PROSECCO wine, which was subject to a Protected Designation of Origin in the EU.
The Appellant had created a drink for dogs and cats, which could be poured over food or consumed on its own. The product was marketed as "wine for pets" under the PAWSECCO name.
The Respondent was an association established and appointed under Italian law to protect and promote the Protected Designation of Origin (PDO) PROSECCO registered in the EU in respect of wine under Regulation 1308/2013. The Respondent opposed the registration of PAWSECCO under the Trade Marks Act 1994 s.3(4), which banned the registration of a mark whose use was prohibited in the UK under EU law. The ground for objection was that the Appellant was exploiting the reputation of PROSECCO and misusing, imitating or evoking the PROSECCO name contrary to the Regulation.
The Appellant argued that the name PAWSECCO was simply a harmless pun and should be regarded as unobjectionable. This was rejected by the hearing officer. He found that the Appellant had obviously foreseen a commercial benefit when it chose the PAWSECCO name. It also created a marketing gimmick by combining a faux wine product for pets coupled with a name evoking a popular type of wine which is almost universally recognized throughout Europe.
This opinion was upheld by the Trade Marks Registry (Appointed Person). It stated that it was only possible for a protected designation to be evoked where the products were completely different. Otherwise, confusion was inevitable. In other words, even though every consumer would easily understand that Pawsecco was not directly linked with Prosecco PDO, the word would be triggered in a consumer’s mind and the pet company was therefore taking undue advantage of the PDO.
It was noted there were no EU regulations regarding applying the principles of GIs to particular situations which would enable a parody to be set up as a justification for an evocation of a PDO.
The scope of a geographical indicator
A 2018 judgment clarified the scope of geographical indication protections for spirit drinks under EU law. The Scotch Whisky Association (SWA) challenged the right of Michael Klotz, an online whisky distributor in Germany, to sell the product under the brand name 'Glen Buchenbach'. The SWA argued the use of the word 'Glen' in the brand name is a breach of the geographical indication protections that apply to 'Scotch whisky' under EU law because 'Glen', meaning “valley” is a term used locally in Scotland.
The case was referred to the Court of Justice of the European Union (CJEU) by the Regional Court in Hamburg for clarification on a GI’s scope. The CJEU held that for a brand to make indirect commercial use of a protected GI for a spirit drink, the brand would have to be "used in a form that is either identical to that indication or phonetically and/or visually similar to it".
However, the CJEU went on to say that, in certain cases, a brand's use could be said to evoke a protected GI even if there is no phonetic or visual similarity between the disputed brand and the protected geographical indication. The CJEU directed that national courts needed to put themselves in the position of a reasonably well informed and reasonably observant and circumspect European consumer when deciding whether or not a disputed brand name evokes images of the protected GI.
GI protection and evocation
For GI protection to apply about 'evocation', national courts must consider that an image of the product protected by the GI would be "triggered directly" in the mind of the average consumer when they saw the disputed product name.
The CJEU said: "Identifying phonetic and visual similarity between the disputed designation and the protected geographical indication is … not an essential condition for establishing that there is an ‘evocation’ … It is only one of the factors to be taken into account by the national court when it assesses whether, when the consumer is confronted with the name of the product concerned, the image triggered in his mind is that of the product whose geographical indication is protected. Accordingly, it is possible that an ‘evocation’ may be found to exist even in the absence of such similarity."
The CJEU said that courts must also, where appropriate, "take account of the criterion of ‘conceptual proximity’ between terms emanating from different languages" in assessing evocation. This is because proximity "may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected, when he is confronted with a similar product bearing the disputed name".
Controversy over geographical indicators and free trade - disagreement between new and old world countries
GI’s have led to many heated debates regarding their effect on free trade. Anselm Kamperman Sanders provides an elegant reason in the online publication Geographical indications of origin: when GIs become commodities, all gloves come off:
“Human knowledge, language and culture have been ported to other locations as a result of human interaction, immigration and even exile. This may result in the production of comparable products through use of comparable methods in new locations, while retaining or referencing former localities or the old home country. If the original product has obtained notoriety, naming the new product by the original geographical indication may be tempting from a commercial perspective, but a sense of belonging, roots or personal identity may also lead to the (referential) use of a geographical location, even though the production of a product has moved elsewhere. New-world nations, most notably the North-Americas and Australia, have consistently rejected the notion of a multilateral register for geographical indications that is dominated by European claims.”
Globalization has always walked a fine line between protecting the cultural uniqueness of nations and provinces whilst opening the door to allow other companies to use common names.
The Consortium for Common Food Names (CCFN) website used to open with a defiant quote from a Wisconsin Member of the United States Congress:
"… We're going to keep making gouda in Wisconsin. And feta, and cheddar, and everything else. So, it is extremely important that we do not allow these countries … to use these kinds of improper barriers to block U.S. dairy exports."
Such strong rhetoric shows that the New World has no intention of giving up the fight to stop Europe from monopolizing generic food names with GIs. However, recent case law shows European Courts have no intention of relaxing the rules anytime soon. So, whether North America wins this fight remains to be seen.
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