What are geographical indications (GIs) and what purpose do they serve?
GIs establish intellectual property rights regarding certain products, whose qualities have a specific link to the region, where they are made. The main function of GIs is, on one side, to satisfy consumers’ need of high-quality products, and on the other side, to secure higher levels of profit for producers (GI-protected products are sold at a price 2.23 times higher than non-protected ones), in order for them to maintain the quality of their product.
GIs comprise of:
- Protected designation of origin (PDO) — this type of GI is the strictest among the three and indicates an extremely close link between the product and the geographical region of origin. Characteristic of PDOs is that every part of the production, processing and preparation process must take place in the specific region.
- Protected geographical indication (PGI) — emphasizes the relationship between the specific geographic region and the name of the product. The link itself can consist of a particular quality, reputation or other characteristic that is essentially attributable to its geographical origin. With GIs the requirement is that at least one of the stages of production, processing or preparation takes place in the region.
- Geographical indication of spirit drinks and aromatized wines (GI) — practically identical with PGIs in characteristics and requirements, but as opposed to both PGIs and PDOs, it is only applicable to spirit drinks and aromatized wines.
How does the GI protection manifest itself?
Or, in other words, how similar can a non-protected product get with regard to its name, characteristics and looks, to a protected one, before it’s counted as an infringement?
The Court of Justice of the EU (CJEU) gives us an answer to this question. When it comes to the name of the product, the protection encompasses only its geographical elements. For example, we can make balsamic vinegar and name it just that, but we can’t say our balsamic vinegar comes from the Italian city of Modena, because that would be an infringement on a PGI. A breach might also occur through the use of figurative signs or elements on the product label, when these evoke the image of a protected product or region. Phonetic similarities might also lead to a violation.
What about the visual aspects of the product itself? Can a GI protect a product’s looks and particularly its shape?
The short answer we get from a very recent case of the CJEU is that such a protection is not excluded. In EU law part of the forbidden practices regarding GIs are deliberately formulated as “any other practice liable to mislead the consumer as to the true origin of the product”. This wording, although very vague at first glance, is based on the comprehensive and clear principles of the whole legal system surrounding GIs. Its aim is to optimally inform the consumer and to create a feeling of certainty and trust in their mind regarding the origin of the product and the specific qualities and characteristics associated with it, and on the other hand — to avoid misleading and confusing the consumer as to the actual origin of the product. In short, the legal system surrounding GIs serves the purpose of a guarantee of a product’s origin and its quality. Thus, a product whose looks or shape break these principles, will infringe on the protection of a GI.
What are the criteria used to determine the latter?
In the context of looks and shape, the main factor consists of a specific element (or a combination of elements), which is particularly distinctive of that product. In its recent decision on the topic, the CJEU was faced with a case of a specific type of cheese, originating from the French city of Morbier, which has a distinctive black line going through the middle of each wheel of cheese. As this black line separates it from every other type of cheese, the CJEU ruled that replicating that exact black line would constitute an infringement on the PDO protecting Morbier cheese, as this would inevitably evoke in the mind of the consumer the image of a product, protected by a PDO. The same principle respectively applies to the shape of a product.
To summarize, replicating the looks or shape of a protected product is not allowed if the specific part of the looks or shape being replicated constitutes a particularly distinctive element of the product and, taking into account all relevant factors in the case, would evoke in the mind of the consumer the false understanding that the product is covered by the respective GI.