Geographical indication protection: Proposed Change to regulation from the EC
On the 13th of April 2022, the European Commission published a proposal for a Regulation on geographical indication protection for craft and industrial products (“CI products”). Currently the proposal is open to public feedback until the 13th July 2022, after that date it will be submitted to legislative debate.
A CI product, in terms of the scope of protection of the proposal (article 2), could be divided in two sub-groups:
- Craft products: “products produced either totally by hand or with the aid of manual tools or by mechanical means, whenever the direct manual contribution is the most important component of the finished product;”
- Industrial products: “products produced in a standardised way, typically on mass scale and through the use of machines”.
These two sub-groups could be potentially subject to protection if all the conditions on article 5 are met:
“(a) The product originates in a specific place, region or country;(b) Its given quality, reputation or other characteristic is essentially attributable to its geographical origin; and (c) at least one of the production steps of the product takes place in the defined geographical area.”
Quality associated with geographic origin
In the EU there are countless industrial and hand-crafted products where quality is linked to their geographical origin. For example, in Spain the scope is very varied, including traditions where roots go back to medieval Al-Andalus. Examples are: “vidrio soplado en la Granja de San Ildefonso” (blown glass at Granja de San Ildefonso), “encaje de bolillos de Almagro” (Almagro embroidery), “tradición cestera de Mallorca” (baskets of Majorca) or “la taracea de Granada” (Granada marquetry and inlaid wood), among others.
The current legal framework of geographical indication protection established at an EU level is fragmentated in different legislations and just for specific types of products: wines (Regulation (EU) No 1308/2013), spirit drinks (Regulation (EU) 2019/787), aromatised wines (Regulation (EU) No. 254/2014) and agricultural products and foodstuffs (Regulation (EU) No 1151/2012).
Although the scope of this article is not to thoroughly analyse the differences and similarities of the systems, there are two important factors that must be highlighted from this legislative proposal on CI products:
- It attributes competence to the European Union Intellectual Property Office (“EUIPO”) for the registration; and
- It allows CI products to benefit from the international registration system under the 2015 Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, administrated by the World Intellectual Property Office (“WIPO”).
The proposed registration procedure for CI products has a national phase prior to the EUIPO stage. During this national phase, the national competent authority will examine if the CI product meets the conditions of the cited article 5 and if the application complies with the formal requirements (such as: documentation, registration forms and product specification). It should also be noted that a temporary national-wide protection could be granted.
Proposed geographical indication division
For the examination at EUIPO stage, the plan is to create a new division, the Geographical Indications Division, and an Advisory Board (a geographical indications expert panel whose opinions will be non-binding). Both stages, national and at EUIPO, will have an opposition procedure, the main difference being that: the national procedure will occur after the examination of the national competent authority wherein the EUIPO opposition will be prior to the definitive decision of the Geographical Indications Division.
Naturally the proposed Regulation includes provisions for the protection of registered Geographical Indications against the use of the Geographical Indication and registration and/or use of trademarks and domain names in conflict (articles 35 to 44). The basic regime of protection (art. 35.1) does not differ in essence from the other Regulations on Geographical Indications cited before, consequently the following acts are prohibited: commercial use in respect of identical o similar products, evocation, false or misleading indication as to the essential qualities of the product or any other practice liable to mislead the consumer as to the true origin of the products.
Article 36 contains a limitation to the exclusive right by which a producer could indicate that a part or a component of a manufactured product is a product designed by a geographical indication, except when it is used in the sales designation name (subject to agreement) and under no circumstances when the use is not in accordance with honest commercial practice and weakens, dilutes, or is detrimental to, the reputation of the geographical indication.
This legislation, if approved, deserves positive feedback, not only would it create more economic investment in the national and European Union Intellectual Property offices, it would benefit less-developed regions by attracting tourism, boost niche markets and increase the consumers’ appeal for these products. Geographical Indication protection will guarantee a specific product quality and an historical value that would make the products more appealing, while protecting and enhancing the endurance of regional cultural heritages.