Geographical Indications and Brexit

If you make Scotch whisky, Dorset Blue cheese or Traditional Cumberland sausages you will know all about geographical indications, or GIs. Have you considered the impact Brexit will have on the rights you use and on how you package your products?

At 11pm on 31 December 2020, the Brexit transition period will end. Businesses must be prepared for imminent changes to intellectual property rights in the UK and EU. Trade marks, designs and geographical indications will be the intellectual property rights most affected. Producers and retailers of food and drink products particularly must be alive to Brexit's impact on GIs, which may require them to amend product packaging. Additionally those considering applying for GIs next year will need to apply separately in the UK and in the EU. In this article, we address GIs and Brexit and what it means for those trading in protected goods. For information regarding Brexit and trade marks, designs, copyright and patents, please see our article on intellectual property rights and Brexit here. 

What is a geographical indication? A GI is a sign used on products to denote that products marked with the GI are manufactured in a specific origin and possess certain qualities which flow from that origin. For example a Melton Mowbray pork pie must be made using a traditional recipe and within the vicinity of Melton Mowbray. Other examples include Stilton, Yorkshire Wensleydale, Jersey Royal potatoes and Cornish clotted cream.Often GIs are applied for by an association of collective manufacturers to protect the goodwill in the export of that geography by ensuring that other suppliers do not misrepresent themselves as manufacturing their product in the specified location, to the specified standard.The proprietors of a GI and/or Trading Standards may pursue any entity, in the territory protected by the registration, which manufactures or sells a product which does not originate from that territory and/or does not comply with the specification. In essence, you can't sell a Cornish pasty that hasn't been made in Cornwall.

Why is Brexit relevant to GIs?

The EU Commission is responsible for the protection of GIs throughout the EU member states. The EU Commission has, therefore, been responsible for GIs in the UK.On the expiry of the transition period, the EU GI scheme will cease to have effect in England, Scotland and Wales. Northern Ireland will continue to be protected by the EU scheme. 

What will happen to registered EU GIs at the end of the transition period?

GI registration is available for applicants from 'third countries'; the registrant does not need to be established within the EU and the geographical origin may be based outside of it. As such, all registered EU GIs will continue to have effect after the transition period, including those with UK based origins. However, as of 1 January 2021, an EU GI will not confer protection in England, Scotland and Wales. The UK will set up its own GI schemes which will be managed by DEFRA. Proprietors of existing EU GIs (as of 11pm on 31 December 2020) will be granted an equivalent UK right. Those benefitting from EU GI protection will experience uninterrupted protection in both the EU and the UK. The proprietors of EU GIs registered before the expiry of the transition period do not need to take any action to be granted registration in the England, Scotland and Wales; registration of an equivalent UK GI will be automatic and at no cost. 

What differences will there be between the UK GI scheme and the EU GI scheme?

At present, there do not appear to be any significant differences between the UK and EU GI schemes (other than the territories which they protect). The UK Government has said that the protection conferred by a UK GI shall mirror that conferred by an EU GI.The UK scheme will protect food, agricultural products and drinks (including beers, wines, aromatised wines and spirits), with specific origins. Three schemes will be established:

• Protected designations of origin (PDO): all elements of manufacture and the sourcing of raw materials must take place within the defined geographical area to be granted a PDO;
• Protected geographical indications (PGI): appropriate where some elements of production or the sourcing of some materials may take place outside of the defined geographical area; and
• Traditional speciality guaranteed (TSG): these are not confined to producers of a specified origin but are appropriate for products crafted from traditional methods or recipes which serve to distinguish them for other similar products.

What will happen to outstanding applications for EU GIs at the end of the transition period?

The EU GI application will continue to progress and, if granted, will apply to EU member states and Northern Ireland. The applicant will be required to apply separately to DEFRA for protection in England, Scotland and Wales. Provided the applicant applies to DEFRA before 30 September 2021, it will be assigned the same application date as the EU GI. 

Who can apply to have registered a UK GI from 1 January 2021?

Any entity is entitled to make an application for a UK GI, however, applicants which are not based in England, Wales, Scotland or Northern Ireland will be required to have a registered GI under the scheme which governs their home nation, prior to making an application to DEFRA for a UK right.

 Does anything change for a UK based entity which wants to apply for an EU GI from 1 January 2021?

 Applicants for EU GIs pertaining to the produce of England, Scotland and Wales will, from 1 January 2021, be treated as applicants from 'third countries' requiring them to have a registered UK GI prior to applying for an EU GI. This requirement does not affect Northern Ireland which shall continue to operate under the EU GI scheme.

 Is there anything which must be practically done by entities which will be conferred protection by a UK GI on or after 1 January 2021?

Producers which benefit from a UK GI will be required to apply one of the marks below to their products, depending on which of the three protections they are afforded.

The requirement to incorporate one of the marks onto product packaging does not extend to the producers of wine or spirits, although wine and spirit producers which benefit from GI protection may opt to include the mark on their packaging if they so wish.

Producers which have registered EU GIs at the end of the transition period (and therefore will be automatically granted a UK GI from 1 January 2021) will have until 1 January 2024 to incorporate the mark to their packaging. Producers which do not benefit from the protection of a registered EU GI prior to the end of the transition period (and are therefore required to make an application to DEFRA for English, Scottish and Welsh protection) should incorporate the relevant mark onto their packaging as soon as their registration for a UK GI is granted. For producers of goods which will benefit from both UK and EU GI protection, the relevant UK mark should be included on packaging for produce retailed in England, Scotland and Wales (if required) and the relevant EU mark should be featured on the packaging of produce retailed in Northern Ireland and/or EU member states (if required). Alternatively, the packaging may feature both UK and EU marks, meaning that the produce may be retailed in the UK and in EU member states. Please note that, whilst the Government has confirmed what will happen to GIs in the UK from 1 January 2021, we are awaiting more detailed guidance regarding applications, amendments and cancellations of GIs from the Department of Environment, Food and Rural Affairs (DEFRA), which will be issued in 2021.  Please contact a member of Freeths' Intellectual Property Team if you have any queries regarding Brexit and your intellectual property rights.

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