[Book Review] The Protection of Geographical Indications: Law and Practice (3rd edition)

This is a review of the newest edition of The Protection of Geographical Indications: Law and Practice (Edward Elgar, 2024) by Michael Blakeney (University of Western Australia). Now in its third edition, the text provides detailed commentary on the European laws on geographical indications (GIs) and related areas of law.

The book is currently available
in hardback and ebook formats.

The book provides substantial international context that helps explain some of the changes to EU GI laws over time. In terms of the substance of the laws, this book takes a slightly different approach to many other IP textbooks. It has a more procedural focus and takes the reader through the provisions of the relevant EU Regulations, adding commentary and insights from the case law as needed. 

History and International Context

As with previous editions, the book opens with a short Introduction (Chapter 1) that provides a brief history of GI protections and their objectives. It then provides a more detailed explanation of the International Geographical Indications Regimes (Chapter 2), from the Paris Convention 1883 to more recent treaties. The chapter contains rich discussion of the TRIPS Agreement and WTO case law on GIs, including the different views of WTO member states that shaped the language of TRIPS and the ongoing debates about amendments to the Agreement. The chapter then discusses the success of the Geneva Act of the Lisbon Agreement, which was adopted in 2015, and represents an important development after the failure of negotiations at the WTO.

EU Protections for Agricultural Products, Wines, and Spirits

The book has separate chapters that correspond to each of the EU Regulations on GIs for agricultural products and foodstuffs (Regulation (EU) 1151/2012), wines (Regulation (EU) No 1308/2013) and spirits (Regulation (EU) 2019/787). It seems that the book was finalised before the European Parliament completed its comprehensive GI reforms (see IPKat coverage here), which now addresses the various categories of products in a single legislative act (Regulation (EU) 2024/1143) that entered into force in May 2024. This is not a major problem, since most of the provisions are substantially similar and the case law will still be relevant (and only the agricultural products and foodstuffs regulation was repealed in its entirety). Therefore, the book will continue to be a valuable resource, but readers will have to cross-check the provisions of the new or amended regulations themselves.

The chapter on agricultural products and foodstuffs (Chapter 3) explores the purposes and requirements for protection under Regulation 1151/2012 and the relevant case law, including the protection of Traditional Specialities Guaranteed and other optional quality terms. Unsurprisingly, the chapter on wine (Chapter 4) is the longest chapter, which includes additional detail about the regulations for wines in the Common Organisation of Agricultural Markets (CMO) in the new edition. Chapter 5 then considers the protection of spirits and the relevant case law.

Chapter 7 deals with enforcement of GIs in the EU, including criminal offences, sanctions, and the role of customs authorities. It explains the conditions under which infringing goods may be destroyed, where penalties may be imposed, and the exchange of information. 

Alternative Forms of Protection

Chapter 6 discusses trade marks, collective marks, certification marks, passing off and domain names. The chapter begins with discussion of the challenges of registering trade marks with geographical elements, although parts of this chapter still refer to the old Community trade mark laws (Regulation (EC) No 207/2009 and Directive 2008/95/EC) and the Office for Harmonisation in the Internal Market (OHIM), which was renamed as the EUIPO in 2016. The chapter then provides a survey of the case law on extended passing off, but the section on the Chobani case only refers to the High Court decision (the Court of Appeal subsequently affirmed Briggs J's decision, see IPKat coverage of the decision here), which means that the book missed an opportunity to emphasise some of the points from the Court of Appeal judgment about the relationship between extended passing off and the EU GI Regulations.

GIs outside of the EU

Chapter 8 focuses on the protection of GIs outside of Europe and the registration of foreign GIs in the EU. It sets out the challenges of negotiating bilateral and free trade agreements to ensure protection of European GIs, especially wines, and the level of protection that these agreements have afforded. Under these agreements, the EU provides reciprocal protection for many foreign GIs, while others obtained direct protection, such as 'Darjeeling' from India. 

The book also dedicates a short chapter to the impact of Brexit on GI protection (Chapter 9). Unfortunately, the chapter does not appear to have been substantially updated since the second edition in 2019. It includes tables of GIs from the UK that are registered or have applications pending in the EU, but some of these were last revised in April 2019, which means, for instance, that the application for the 'Ayrshire New Potatoes/Ayrshire Earlies' PGI is still listed as a pending application when it was in fact registered in July 2019. As for the interpretation of the UK GI laws, the book does not mention the Retained EU Law (Revocation and Reform) Act 2023 and its potential significance for the future interpretation of this "assimilated law" in the event that any GI cases are brought before the higher courts in the UK.

Craft and Industrial GIs

Unsurprisingly, one of the key changes from the second edition was the inclusion of a new chapter (Chapter 10) on the protection of craft and industrial products under Regulation (EU) 2023/2411, which will be fully applicable from 1 December 2025. The book notes that the EU has received considerable pressure to protect non-agricultural GIs during trade negotiations with countries like Brazil, India, and Thailand that have GIs for handicrafts and other goods. The new regulation also reflects the EU's accession to the Geneva Act in 2019, which covers both agricultural and non-agricultural GIs.

Given that the regulation has not fully come into force yet, there has not been any case law on craft and industrial GIs. Consequently, the bulk of the chapter is dedicated to the procedural requirements for an application.  As readers of the IPKat will already be aware, these applications will be considered by the EUIPO, rather than the European Commission, so the chapter outlines how the new Geographical Indications Division of the EUIPO will operate. 

Concluding Thoughts

The law on geographical indications in the European Union has seen some dramatic changes in the last few years. Anyone who writes about intellectual property knows the terrible challenge of publishing about an area where both the subject matter and the law itself can experience rapid change. This new edition has managed to capture some of the recent developments, but we will have to wait for the next edition to reflect all of the latest changes to the EU and UK laws on geographical indications. 

Details

Publisher: Edward Elgar, 2024

Extent: 732 pages

Format: Hardback and eBook

ISBN: 978 1 03533 225 0