Geographical Indications

Last Updated 23 April 2006

A "geographical indication" is a sign assuring consumers that produce comes from, or has been processed in a particular region renowned for the quality of such produce. Familiar examples include Champagne, Scotch whisky and Parma ham. "Geographical indications" are also known as indications of source or appellations of origin.

Treaty Obligations

"Indications of source or appellations of origin" are included in the definition of "industrial property" provided by art 1 (2) of the Paris Convention. HM government is bound by art 22 (2) of TRIPs to prevent "the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good". It is also obliged to stop "any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention." "Unfair competition" is defined by art 10bis (2) of Paris as "any act of competition contrary to honest practices in industrial or commercial matters". It includes, in particular,  "all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor. .... false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor" and "indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods" (art 10bis (3)). Art 10 (2) of Paris provides that "any producer, manufacturer, or merchant, whether a natural person or a legal entity, engaged in the production or manufacture of or trade in such goods and established either in the locality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in the country where the false indication of source is used, shall in any case be deemed an interested party."

Protection in the UK

Historically, this country has discharged its treaty obligations  primarily by the law of passing off. However, it is also possible to obtain trade mark protection by registering collective or certification marks under s.49 and s.50 of the Trade Marks Act 1994 .These are now supplemented by Council Regulation 510/2006 of  20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, Council Regulation 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed, Council Regulation  1493/1999 of 17 May 1999 on the common organisation of the market in wine and Council Regulation 1576/89 of 29 May 1989 laying down general rules on the definition, description and presentation of spirit drinks.

Passing off

The case that extended the common law action of passing off to  geographical indications was Bollinger and others v Costa Brava Wine Company Limited [1960] 1 RPC 16. It was subsequently held in Taittinger SA and others v Allbev Limited and another [1993] FSR 641 that the probanda for an action of passing off apply to geographical indication claims as they do to any other. The differences are that goodwill is shared by all producers of the product in question within the relevant region and the class of traders entitled to such goodwill is capable of continuing expansion in that it may be joined by any producer from the region. Recent cases in which the issue has arisen include Chocosuisse Union des Fabricants de Chocolat and others v Cadbury Ltd. [1999] EWCA Civ 856, William Grant and Others v. Glen Catrine Bonded Warehouse and others [2001] ScotCS 116.

Regulation 1576/89

Two important on Regulation 2081/92 have recently come before the European Court of Justice. In Case C-108/01, Consorzio del Prosciutto di Parma and another v ASDA Stores Ltd and another (20 May 2003), a reference from the House of Lords, the Court held that the Regulation must be interpreted as not precluding the use of a protected designation of origin from being subject to the condition that operations such as the slicing and packaging of the product take place in the region of production, where such a condition is laid down in the specification. In Case C-216/01, Budejovický Budvar, národní podnik v Rudolf Ammersin GmbH (18 Nov 2003) the Court held that the Regulation was not incompatible with the application of a bilateral agreement between Austria and Czechoslovakia by which a simple and indirect indication of geographical origin from Czechoslovakia was protected in Austria.

Regulation 1576/89

This Regulation has been considered in The Scotch Whisky Association v JD Vintners (6 March 1996), The Scotch Whisky Association v Glen Kella [1997] ETMR 470 and Gloag & Son Ltd and Another v Welsh Distillers Ltd and Another [1998] FSR 718.

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