EUIPO BoA IP Case Law Conference Report #6 – “Crafting the Future: New perspectives for Geographical Indications”

This Kat is delighted to continue the reporting on the 5th edition of the Intellectual Property Case Law Conference (IPCLC) organised by the Boards of Appeal of the European Union Intellectual Property Office (EUIPO). The sixth session was devoted to “Crafting the Future: New perspectives for Geographical Indications.” The panel was led by Dr Anke Moerland (Maastricht University).

The EU law on geographical indications has experienced several significant changes over the last year. As the title indicates, the particular focus of this session was the EUIPO's new competence in relation to the new "Craft GI" under Regulation (EU) 2023/2411, which established a unified GI instrument for the protection of craft and industrial product names throughout the EU (see previous reporting on the IPKat here). This GI is granted to products originating from specific places or regions, possessing qualities, reputation, or characteristics essentially linked to their geographical origin, and involving at least one production step in that area.

The session considered the more traditional "AGRI GI" regime (which will be updated when the new Regulation (EU) No 2024/1143 enters into force) and the new Craft GI instrument alongside pivotal topics like the interplay between GIs and EU certification and collective marks, together with the third-country dimension to GIs. These topics were analysed by a distinguished panel of experts, namely: Katarina Kompari (EUIPO), Pilar Montero (University of Alicante), Dr Dev Gangjee (Oxford University) and Virginia Melgar (Chairperson of the 5th Board of Appeal, EUIPO).

The EUIPO's New Competence

Katarina Kompari

We kicked off with the informative presentation from Katarina Kompari, entitled “The New Craft GI: Opportunities and Challenges.” 

She explained the changes that the EUIPO and EU Member States are currently undertaking during the grace period between the entry into force of the Craft GI Regulation on 16 November 2023 and its applicability from 1 December 2025. Amongst many other changes, the EUIPO is busy building their e-filing system and register, as well as drafting guidelines. 

The Craft GI Regulation will provide a unitary title that replaces national rights. However, Member States will still have an important role to play. Katarina explained that Craft GIs will be registered by three possible routes:

1. Standard - the two-stage registration procedure, whereby Member States are the first recipients of the application, then the application is filed with the EUIPO. This mirrors the existing situation for AGRI GIs.
2. Direct - the Craft GI Regulation allows Member States to opt-out of the two stage process (by request to the European Commission). Producers from the countries that opt-out will be able to file directly with the EUIPO.
3. Third country - producers from third countries may file directly with the EUIPO (as well as using international agreements).

The Scope of GI Protection

Pilar Montero

Next, Pilar Montero addressed the important topic of evocation with her presentation entitled “Broadening Protection in Geographical Indications Law.” She took us through the history of the case law that confirmed the broad scope of protection for GIs (such as Case C-87/97 Cambozola), then recognised the existence of infringement without use of the GI name (Case C-44/17 Glen Buchenbach), even in relation to images and shapes, as well as in relation to services (Case C-783/19 Champanillo).

The broad protection for GIs is justified by its aim of protecting cultural heritage and collective rights with specific lineage. This same justification applies to Craft GIs, so the concept of "evocation" is included in the new Regulation. 

However, Pilar highlighted that a potential divergence might emerge between AGRI GIs and Craft GIs: whereas evocation has been defined in Article 40.2 of the Craft GI Regulation, the same definition is placed in Recital 35 of the new AGRI GI Regulation. This means that the courts will have less room for interpretation in relation to Craft GIs, and this could potentially lead to different interpretations between the types of GIs.

The Issues for Third Countries

Dr Dev Gangjee

Dr Dev Gangjee then took the floor to discuss the topic, “Can CRAFT and AGRI GIs successfully meet the challenges of globalization?” He began by reviewing the WIPO statistics on GI protection, which suggest that it is unlikely that the EUIPO will face an influx of GI applications from third countries. Rather, he argued that the issue for the EUIPO will be the issue of the varying degree of protection offered to GI products from third countries.

Dev explained that the issue arises from the ways that third country GIs can obtain protection in the EU. If they take the direct route, their protection is governed by the EU law, which applies equally to EU producers. However, the GIs that are protected via bilateral trade agreements will only receive the bespoke degree of protection afforded by the negotiated text. Dev quipped that while countries (like Canada) love strong European cheese, they turn their noses up at strong European GI law.

The presentation also surveyed the impact of opposition proceedings in third countries, such as the recent challenge to the GI registration of Prosecco in Singapore (covered by this Kat here). On this subject, Dev emphasised that we need more information about opposition proceedings across the EU (which are mostly handled by Member States) to help us better understand the issues and reasoning.

Marking the Territory of GIs

Virginia Melgar

Last, but certainly not least, Virginia Melgar considered the topic “Too good to be true? – Exploring triangulation between GI Regulations and certification or collective marks.” She emphasised that collective and certification marks should not be used synonymously with GIs, given their different roles. 

Virginia discussed the common practice of producers to obtain collective or certification marks in order to protect their interests while they wait (often many years) for GI registration. Whilst GIs offer the best protection, there are many conditions for registration and they are not always a possibility for producers, which leave collective and certification marks with an important role to play.

She then took participants on a tour of the different outcomes for collective and certification mark applicants. Whilst many producers have managed to obtain collective marks (e.g. ‘Platano de canarias’) and certification marks (e.g. ‘Estate Whiskey’), others have been refused (e.g. 'Irish Angus'), often due the challenges posed by Article 83.1 EUTMR. Unfortunately, there has been very little case law on this topic, so Virginia closed with a plea for the practitioners in attendance to bring more appeals to provide more clarity and consistency, as well as for researchers to consider these issues in their scholarship.

A Provocation on Evocation

Given the broad scope of protection under the "evocation" head of infringement and recent expansion of the subject matter of EU GI law to include crafts and industrial products, Dr Gangjee left the audience with a provocation: will the new Craft GI Regulation create a super design-copyright amalgam? As IPCLC attendees and IPKat readers ponder these big questions, one thing is for sure - the law on geographical indications will keep IP lawyers and academics busy for years to come!

Stay tuned for the final report on the conference...

Other IPCLC Reports:

• EUIPO BoA IP Case Law Conference Report #1 – “An Odyssey Through the Evolving Landscape of Trade Mark General Court Judgments”
• EUIPO BoA IP Case Law Conference Report #2 – “A Deep-Dive into latest Design Case-law and Developments: Multi-layered Perspectives”
• EUIPO BoA IP Case Law Conference Report #3 – “Reconciling the Old with the New: Challenges of Trade Mark Modernization”
• EUIPO BoA IP Case Law Conference Report # 4 – “IP Code-Breaking in the Era of AI Advancements”
• EUIPO BoA IP Case Law Conference Report #5 : “Copyright in flux: What does the future have in store?”