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1. Legal Overview

The Protection of the Protected Geographical Indications in Europe TAIEX Seminar on Trade Marks and Designs Warsaw November 28 Rafael Fernández Ibiza. 1. Legal Overview. 1.1Legal Frame:

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1. Legal Overview

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  1. The Protection of the Protected Geographical Indications in EuropeTAIEX Seminar on Trade Marks and DesignsWarsaw November 28Rafael Fernández Ibiza

  2. 1. Legal Overview 1.1Legal Frame: • Council Regulation (EC) No 510/2006 on the protection of Geographical Indications and Designations of Origin for Agricultural products and Foodstuffs. • Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine. • Council Regulation (EEC) No 1576/89 of 29 May 1989 laying down general rules on the definition, description and presentation of spirit drinks.

  3. 1. Legal Overview • 1.2.- WINES GIs • Not really UE registration but recognition (art 47). • Registration at national level • EU Committee recognices the Geographical Indication • then protection in the EU (art 50): • against identical copies of the name • against similar names • against “type” clauses • against “semi-generic” - Protection granted to recogniced group of producers

  4. 1. Legal Overview • 1.3.- SPIRITS • Not really UE registration but recognition (art 5) • registration at national level • EU Committeerecognices the Geographical Indication • then protection in the EU • 1.4.- MANUFACTURED PRODUCTS - only under national legislations if possible

  5. 1. Legal Overview • 1.5.- FOODSTUFFS REGISTRATION • PRODUCTS: cheese, sweets, hams, oils, fruits and vegetables, flowers, fish, coffee, chocolate, wool, beer, vinegars, etc • not elaborated products: noodles, ice cream, foods … • No registration at national level • but national procedure: application before national Department of Agriculture • provisionalprotection in country of origin • ex auto protection in UE

  6. 1. Legal Overview • 1.5.- AGRICULTURAL PRODUCTS AND FOODSTUFF • Creation:RECORD • Process established on Rule 510/2006 and national legislation. • Application made by producers through the Member States. • Product Specifications: product specifications in relation with the origin and/or product elaboration and the product as such. • Application opened to third countries (art. 12).

  7. 1. Legal Overview 1.6 Territorial Protection

  8. 2. EC Reg. 510/06 REGISTRATION • 2.1.- CHOOSING A MODEL: PDO Or PGI?(Art. 2) • Protected Designations of Origin (art. 2.1.a) • Region and specific places names, and excepcionally country names. • Product original from that region. • Quality or characteristics due to the geographical environment +human factors. • Production, preparation andprocessing in the geographical area. • Protected Geographical Indications (art. 2.1.b) • Region name. • Product original from that region. • Quality or reputation dueto the geographical environment. • Production and/or preparation and/or processing in the geographical area.

  9. 2.2.- APPLICATION Application for registration: Free Previous requirements: Member States: filing before national authorities and national examination procedure. Third countries: national protection. Who can make the application? The member state after of the producers application. Third countries: also the producers directly. Who will receive the application? The European Comission, the Directorate-General of Agriculture The application should include at least: The state application of register. Declaration of the Member state stating that they meet the verification process. Product specifications. Single Document (short description) The documents sent to the European Commission should be in one of the languages of the Member States. 2. EC Reg. 510/06 REGISTRATION

  10. 2. EC Reg. 510/06 REGISTRATION • 2.3.- SCRUTINY • Scrutiny by the Commission: • DG AGRI will scrutinise: • Formal requirements (required documents). • Material requirements (Product Specifications). • It will examinate at the same time three applications for each country. • They could make some consultations requesting aditional information: • About the product specifications or the single document. • They have 6 months to answer. • The DG AGRI will make some consultations to other deparments of the European Commission in order to know their remarks. • If the requirements are fulfilled: publication at the Official Journal of the European Union.

  11. 2. EC Reg. 510/06 REGISTRATION • 2.4.- OBJECTION TO THE REGISTRATION: • Within six months from the date of publication in the Official Journal of the European Union with a duly substantiated statement. • Active legitimation: • Member State. • Third State member of the WTO. • Objection requirements: • No compliance with the legal conditions. • Geographical name which has become generic. • Procedure: • Consults between the states. • Juditial way.

  12. 2. EC Reg. 510/06 REGISTRATION 2.5.- THE PRODUCT SPECIFICATIONS: • Basic document of the PDO/PGI. • Technical document with some specifications and protected products characteristics. • Legal document which stablish some obligations for the PDO/PGI members. • Two main functions: • Explaining and substantiating the reasons to protect the product. • Stating some obligations for the PDO/PGI producers.

  13. 2. EC Reg. 510/06 REGISTRATION • PDO/PGI Name. • In exceptional cases a name of a country. • Relations with Intellectual Property Rights. • Description of the product characteristics: • Different product varieties and ripe stages. • Organoleptic characteristics. • Definition of the Geographical Area: • Clear and precise.

  14. 2. EC Reg. 510/06 REGISTRATION 2.6.-THE PRODUCT SPECIFICATIONS. CONTENT: • The link between the product and the geographical area: • Natural factors (weather, soil, pluviometry,…) • Human factors (traditions, cultural aspects,…) • Prestige and reputation (historical and current papers including promotion activities). • Description of the obtaining and elaboration methods: • Harvesting peculiarities. • Special and traditional elaboration process. • Characteristics of the human´s influence over the product.

  15. 2. EC Reg. 510/06 REGISTRATION • Control structures: • Independent body which shall guarantee the fulfilment of the Product Specifications. • The product certification bodies shall comply with the European Standard EN 45011 or ISO/IEC Guide 65. • Product trazability. • Details about labelling: • Use of their own logo • Fulfilment of the national legal requirements: • National recognition as a PDO/PGI

  16. 3. CONSEQUENCES • 3.1.- EXCLUSIVE RIGHT:(ex art. 13) • exclusivity on the geographical name • for the products that have been protected (same or similar) • within the 25 states of EU. • 3.2.- IUS PROHIBENDI(Art. 13) • direct or indirect commercial use of the geographical name • acts implying misuse, imitation or evocation even though the real origin of the product is indicated. • the use of the name simply translated or associated to expressions such as “type”, “style”, “method”, “as produced in” or similar. • any other false or misleading indication as to the provenance, origin, nature or essential qualitities of the product liable to convey a false impression as to its origin • any other practise liable to mislead the consumer as to the true origin of the product

  17. 3. CONSEQUENCES “Grated cheese ITALIAN style” Know this cheese? Parmesan’s Typical knife

  18. 3. CONSEQUENCES “TIPO” = Jijona “type”

  19. 3. CONSEQUENCES • 3.3.- INTERPRETATION of ECJ JURISPRUDENCE • COMPOSED DESIGNATIONS. One single part of the designation cannot be protected by sole right, due to its genericity. • The national judge shall decide in any case • (EPOISSES DE BOURGOGNE, 9 june 98, Cases C-129/97 C-130/97) • VIOLATION, IMITATION, EVOCATION. In order to define whether exists likelihood of confusion it has to be carried out a global analisis over the elements that are present in the product • (GORGONZOLA Case, 4 march 99, Case C-87/97) • TRANSLATION. In no case translations will be considered as generic names ( Case PARMESAN, 25 june 02, Case C-66/00) • CUT AND PACKED BY. Compulsory reminder if it appears in the technical specifications • (PROSCIUTTO DI PARMA, 20 may 03, Case C-108/01)

  20. 3. CONSEQUENCES • 3.4.- CONFLICTS WITH TRADEMARKS (art. 14) • It has to be analyzed case by case • It is impossible to register a trademark if a Designation has been filed • It is possible the coexistence of a registered trademark, used in goodfaith and registered before the filing of a Designation • It is required the good faith of the trademark owner! • It is not possible the registration of a Designation in case a well-known trademark already exists and if the existing sign can lead to confusion or result misleading to the consumers about the origin of the products

  21. PDO/PGI EUROPEAN LOGO • 3.5.- PDO/PGI EUROPEAN LOGO • compulsory use of the Logo on packaging • controversy when product used as an ingredient • EC Regulation 1726/1998: • distinctive sign • same for PDO/PGI • (also the same for STG) • Minimun size (15 mm diameter) • colours (pantone standards) • no fading or hiding the logo

  22. Thank you for your attention!! Rafael Fernández Ibiza rfernandez@lbabogados.com

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