The past year has seen several important EU legislative changes in geographical indications. Therefore, we focus on this topic in this expert article. One of the changes is the introduction of protection at EU level for craft and industrial (non-agri) products through geographical indications. In addition, a new Agri Regulation harmonises the existing protection for wine, spirit drinks and agricultural (agri) products through geographical indications. We first elaborate on these changes and then look specifically at the impact of the new Agri Regulation for BOIP.
Geographical indication: brief overview
The name of a product that comes from a particular region and has a reputation based on its quality or origin can be protected in the EU as a geographical indication. The purpose of this protection is to ensure that consumers are clearly informed about the geographical origin of products and that their specific, intrinsic qualities are guaranteed.
In the European Union, the names of more than 3,500 products are protected. The protection of geographical indications distinguishes between protected designations of origin (PDO) and protected geographical indications (PGI).
Protected designation of origin (PDO)
Product names registered as PDOs are most closely linked to the place where they are produced. They are granted to products whose quality or characteristics are mainly or exclusively due to a particular geographical environment.
Protected geographical indication (PGI)
A PGI emphasises the relationship between the specific geographical region and the name of the product, where a particular quality, reputation or other characteristic is essentially attributable to its geographical origin. Furthermore, at least one of the stages of production, processing or preparation takes place in the region.
Legislative changes
The past year has seen two major EU legislative changes for geographical indications.
New regulation for craft and industrial products (Non-Agri Regulation)
Until recently, EU legislation only protected geographical indications for agricultural products and foodstuffs, wines and spirit drinks. Similar protection for craft and industrial products did not exist.
The new Regulation (EU) 2023/2411 of the European Parliament and of the Council of 18 October 2023 on the protection of geographical indications for craft and industrial products and amending Regulations (EU) 2017/1001 and (EU) 2019/1753 recognises this disparity and provides a harmonised framework for the protection of the names of craft and industrial products from the EU. As a result, similar protection is now in place as for regionally produced foodstuffs or beverages. The new regulation only provides for protection by PGIs and not by PDOs.
According to the law, ‘craft products’ are products made entirely by hand, or with the aid of manual or digital tools, or by mechanical means, whenever the manual contribution is an important component of the finished product. On the other hand, ‘industrial products’ are products produced in a standardised way, including serial production and by using machines.
The new system will apply from 1 December 2025. From this date, it will be possible in the EU to apply for registration of the names of craft and industrial products that meet the necessary requirements through a single application covering all EU member states.
EUIPO will play an important role in the implementation of the new protection system, in particular regarding the registration procedures for craft and industrial geographical indications.
Thus, the impact of the new regime for BOIP is still some time away. In the future, however, the new regulation will impact the examination on absolute grounds, as well as the opposition and cancellation proceedings. BOIP will then have to take these new geographical indications into account in these proceedings.
New Agri Regulation
Previously, geographical indications for wines, spirit drinks and agricultural products were regulated separately in different regulations.1 However, the scope of protection for these products was not uniform and this has now been remedied by a new regulation.
The new Regulation (EU) 2024/1143 of the European Parliament and of the Council of 11 April 2024 on geographical indications for wine, spirit drinks and agricultural products as well as traditional specialties guaranteed and optional quality terms for agricultural products (hereinafter ‘the Agri Regulation’) was published on 23 April 2024 and entered into force on 13 May 2024.
The aim of the Agri Regulation is to establish a standardised and conclusive regulatory framework, improve sustainable practices and empower producers. It also introduces a single simplified procedure for registration of geographical indications.
The new Agri Regulation replaces in its entirety the Regulation on agricultural products (EU 1151/2012). The new Agri Regulation also amends the regulations for wine (EU 1308/2013) and spirit drinks (EU 2019/787), among others. Some of the provisions from these last two regulations are therefore still valid.
The impractical consequence is that the relevant rules for these products are spread across different documents. Substantively though, protection has been aligned.
Relationship between the Agri Regulation and trademark law
Article 26 of the Agri Regulation defines the scope of protection of geographical indications. Article 31 of the Agri Regulation regulates what consequences this has for trademarks.
If a trademark application violates Article 26, the application has to be refused following Article 31. If there is a trademark registration, this registration will be considered invalid.
Article 26, paragraph 1 lists several types of use of a geographical indication that are not allowed. Below we explain the two main ones:
Direct or indirect use
Article 26, paragraph 1, sub a provides that geographical indications are protected against any direct or indirect use of the indication for products not covered by the registration, where it concerns comparable products.
To determine whether or not there is use of a geographical indication, it is necessary to assess whether a trademark contains this indication in its entirety or a term that is phonetically and/or visually very similar.2
Evocation
Article 26, paragraph 1, sub b of the Agri Regulation also provides that geographical indications are protected against any evocation, even if the true origin of the products or services is indicated.
The concept of evocation is explained in paragraph 35 of the preamble following the interpretation of the CJEU. Evocation of a geographical indication may arise, in particular, where a link with the product designated by the registered geographical indication, including with reference to a term, sign, or other labelling or packaging device, is present in the mind of the average European consumer who is reasonably well-informed, observant and circumspect.
Application of Article 26 Agri Regulation at BOIP
Examination absolute grounds
Since 1 March 2019, BOIP examines trademark applications, among other things, for possible conflict with geographical indications in accordance with Article 2.2bis, paragraph 1, sub i BCIP:
" The following shall not be registered or, if registered, shall be liable to be declared invalid: [...]
- trademarks which are excluded from registration pursuant to Union legislation or the internal law of one of the Benelux countries, or to international agreements to which the European Union is party or which have effect in a Benelux country, providing for protection of designations of origin and geographical indications;
If there is a conflict between the trademark application and a geographical indication pursuant to Article 2.2bis, paragraph 1, sub i BCIP, the application must be refused.
The exact scope of protection derives from the regulation and not from the BCIP.
Conditions
A refusal under the previous article combined with Article 26 of the Agri Regulation requires two cumulative conditions to be met:
There must be a registered geographical indication that enjoys protection at EU or Benelux level.
To ascertain whether a trademark application involves a geographical indication protected in the EU or Benelux in the light of Article 2.2bis, paragraph 1, sub i BCIP, BOIP uses, among others, the following EU databases in its examination:
- eAmbrosia database, the EU register of GIs of the names of agricultural products and foodstuffs, wines and spirits registered and protected throughout the EU.
GIview database, where all information can be found on all GIs protected within the EU (including GIs of non-EU countries protected at EU level through bilateral and multilateral agreements) and on EU GIs protected in non-EU countries.
Please note that the databases contain both approved indications and those not yet approved.
The use of the mark applied for must lead to one of the situations referred to in Article 26, paragraph 1 Agri Regulation.
In particular, this concerns goods that are identical to the product covered by the geographical indication3 and goods in which the geographical indication is a relevant ingredient.
Overcome refusal by means of a limitation of the list of goods
Under Article 36 of the Agri Regulation, a registered geographical indication may be used by any operator marketing a product that complies with the relevant product specification.
Therefore, a refusal can be avoided if the goods in question are limited in such a way that they comply with the product specification of the geographical indication in question.
However, the limitation of goods can be a complex task, consisting largely of case-by-case examination. More information on this can also be found in our Guidelines on Examination of Absolute grounds
The number of cases at BOIP on refusal on absolute grounds due to a conflict with a geographical indication is limited, but you can think of, for example:
Direct/indirect use
An application for a distinctive word/figurative mark for ‘wines’ containing the word element ‘Champagne’ uses the PDO Champagne which enjoys protection in relation to wines and will therefore have to be restricted to the goods: Wines complying with the product specifications of the protected designation of origin ‘Champagne’. However, if the applicant does not agree to the limitation, BOIP must refuse the trademark application.
Evocation
Een aanvraag voor een onderscheidend woord-/beeldmerk voor ‘kazen’ dat het woordelement ‘Gorgonzolelge’ bevat, evoceert de BOB Gorgonzola die bescherming geniet in relatie tot kazen en zal dus moeten worden beperkt tot de waar: Kazen die voldoen aan de productspecificaties van de beschermde oorsprongsbenaming “Gorgonzola”. Als de aanvrager echter niet met de beperking akkoord gaat, moet BOIP de merkaanvraag weigeren.
Inter partes procedures
The protection of a geographical indication also constitutes grounds for opposition and cancellation.
Article 2.2ter, paragraph 3, sub c BCIP provides:
Furthermore, a trademark shall, in case an opposition is filed, not be registered or, if registered, shall be liable to be declared invalid where: [... ]
c. and to the extent that, pursuant to Union legislation or the internal law of one of the Benelux countries providing for protection of designations of origin and geographical indications:
i. an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the internal law of one of the Benelux countries prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its subsequent registration;
ii. that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trademark
Importantly, the opponent or applicant in these proceedings must provide evidence of the existence of the earlier right, in this case the protected designation of origin or geographical indication. In addition, the opponent or applicant must prove that it is entitled to initiate the proceedings.
Up till now, the number of inter partes proceedings at BOIP is very limited. There have only been two opposition decisions:
1) In the first case, the PDO HALLOUMI for ‘cheeses’ was invoked against the application for a figurative mark containing the word ‘Polloumi’. This mark had been applied for, among other things, cheese. The opposition was upheld on the basis of evocation, as the similarity between the signs was such that the contested mark evokes in the public's mind the image of the BOB HALLOUMI, and the product covered therein will appear in the consumer's mind. The fact that the mark contains the indication ‘Belgian grill cheese’, the so-called ‘delocaliser’, does not alter this.
2) In the SEX en Provence case, PDO Côteaux d'Aix-en-Provence for ‘wines’ was invoked against the SEX en Provence trademark application for the goods: Wines with protected designations of origin ‘Côtes de Provence’, ‘Coteaux d'Aix-en Provence’, ‘Coteaux varois en Provence’, ‘Les Baux de Provence’ in Class 33. The opposition was rejected. It was held that there was no direct or indirect use of the PDO. Even though the trademark application could evoke the PDO invoked, it was decided that the limitation of the list of goods ensures that goods bearing the mark are covered by the PDO invoked, originate from the geographical area concerned and display the required characteristics. There can therefore be no violation of the rights attached to the geographical indication. Finally, it was also held that the trademark application will not mislead consumers as to the geographical origin and/or other characteristics of the wines to which it is affixed. This decision was appealed to the Benelux Court of Justice.
Cancellation proceedings have not yet taken place.
1 (EU) nr. 1151/2012 of 21 November 2012 (agricultural products and foodstuffs); (EU) nr. 1308/2013 of 17 December 2013 (inter alia wines) and (EU) 2019/787 of 17 April 2019 (spirit drinks).
2 According to the CJEU, ‘the term “use” [...] requires by definition [.... ] that the contested sign itself makes use of the protected geographical indication in the form in which that indication is registered or, in any case, in a form which, from a phonetic and/or visual point of view, is so closely connected with it that the contested sign is clearly inseparable from it’ see CJEU 7 June 2018, C-44/17, ECLI: EU:C:2018:415, para 29 (SCOTCH WHISKY); CJEU 9 September 2021, C-783/19, ECLI:EU:C:2021:713, para 38 (Champanillo).
3 See paragraph 34 of the preamble to the Agri Regulation