Frequently Asked Questions: Geographical Indications

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.

A geographical indication right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. For example, in the jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for the geographical indication.

However, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.

Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.

There are four main ways to protect a geographical indication:

• so-called sui generis systems (i.e. special regimes of protection);
• using collective or certification marks;
• methods focusing on business practices, including administrative product approval schemes; and
• through unfair competition laws.

These approaches involve differences with respect to important questions, such as the conditions for protection or the scope of protection. On the other hand, two of the modes of protection — namely sui generis systems and collective or certification mark systems — share some common features, such as the fact that they set up rights for collective use by those who comply with defined standards.

Broadly speaking geographical indications are protected in different countries and regional systems through a wide variety of approaches and often using a combination of two or more of the approaches outlined above. These approaches have been developed in accordance with different legal traditions and within a framework of individual historical and economic conditions.

In many sui generis legislations, registrations for geographical indications are not subject to a specific period of validity. This means that the protection for a registered geographical indication will remain valid unless the registration is cancelled.

Geographical indications registered as collective and certification marks are generally protected for renewable ten-year periods.

The right to use a protected geographical indication belongs to producers in the geographical area defined, who comply with the specific conditions of production for the product.

Like all intellectual property rights, the rights to geographical indications (GI) are enforced by the application of national legislation, typically in a court of law. The right to take action could rest with a competent authority, the public prosecutor, or to any interested party, whether a natural person or a legal entity, whether public or private. The sanctions provided for in national legislation could be civil (injunctions restraining or prohibiting unlawful acts, actions for damages, etc.), criminal, or administrative.

Geographical indications (GIs) identify a good as originating from a particular place. By contrast, a trademark identifies a good or service as originating from a particular company.

A trademark often consists of a fanciful or arbitrary sign. In contrast, the name used as a geographical indication is usually predetermined by the name of a geographical area.

Finally, a trademark can be assigned or licensed to anyone, anywhere in the world, because it is linked to a specific company and not to a particular place. In contrast, a GI may be used by any persons in the area of origin, who produces the good according to specified standards, but because of its link with the place of origin, a GI cannot be assigned or licensed to someone outside that place or not belonging to the group of authorized producers.

An indication of source can be defined as an indication referring to a country (or to a place in that country) as being the country or place of origin of a product. In contrast to a geographical indication, an indication of source does not imply the presence of any special quality, reputation, or characteristic of the product essentially attributable to its place of origin. Indications of source only require that the product on which the indication of source is used originate in a certain geographical area. Examples of indications of source are the mention, on a product, of the name of a country, or indications such as “made in ….”, “product of ….”, etc..

Appellations of origin are a special kind of geographical indication (GI). GIs and appellations of origin require a qualitative link between the product to which they refer and its place of origin. Both inform consumers about a product’s geographical origin and a quality or characteristic of the product linked to its place of origin. The basic difference between the two concepts is that the link with the place of origin must be stronger in the case of an appellation of origin. The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin. This generally means that the raw materials should be sourced in the place of origin and that the processing of the product should also take place there. In the case of GIs, a single criterion attributable to geographical origin is sufficient – be it a quality or other characteristic of the product – or even just its reputation.

The term “geographical indications”, in its broad sense, includes a variety of concepts used in international treaties and national/regional jurisdictions, such as: appellation of origin (AO), protected designation of origin (PDO) and protected geographical indication (PGI). For instance,

• “Geographical indication” is defined in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and in the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
• “Appellation of origin” is defined in the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and in the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
• “Protected Designation of Origin (PDO)” and “Protected Geographical Indication (PGI)” are terms used within the European Union.

Products identified by a geographical indication are often the result of traditional processes and knowledge carried forward by a community in a particular region from generation to generation. Similarly, some products identified by a geographical indication (GI) may embody characteristic elements of the traditional artistic heritage developed in a given region, known as “traditional cultural expressions” (TCEs). This is particularly true for tangible products such as handicrafts, made using natural resources and having qualities derived from their geographical origin.

GIs do not directly protect the subject matter generally associated with TK or TCEs, which remains in the public domain under conventional IP systems. However, GIs may be used to indirectly contribute to their protection, for instance, by preserving them for future generations. This can be done, for example, through the description of the production standards for a GI product, which may include a description of a traditional process or traditional knowledge.

In the context of geographical indications, generic terms are names which, although they denote the place from where a product originates, have become the term customary for such a product. An example of a GI that has become a generic term is Camembert for cheese. This name can now be used to designate any camembert-type cheese.

The transformation of a geographical indication into a generic term may occur in different countries and at different times. This may lead to situations where a specific indication is considered to constitute a geographical indication in some countries, whereas the same indication may be regarded as a generic term in other countries.

Homonymous geographical indications (GI) are those that are spelled or pronounced alike, but which identify products originating in different places, usually in different countries. In principle, these indications should coexist, but such coexistence may be subject to certain conditions. For example, it may be required that they be used only together with additional information as to the origin of the product in order to prevent consumers from being misled. A GI may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product’s true origin.

Protection may be requested by a group of producers of the product identified by the geographical indication. The producers may be organized as an entity, such as a cooperative or association, which represents them and ensures that the product fulfils certain requirements which they have agreed upon or adhered to. In some jurisdictions, protection may also be requested by a national competent authority (for example, a local government authority).

Protection for a geographical indication (GI) is granted by a national (regional) competent authority upon request. In some countries the function of granting GI protection is carried out by a special body responsible for GI protection. In other countries, the national intellectual property (IP) office carries out this function. A directory of IP offices is available on the WIPO website.

A sign must qualify as a geographical indication under the applicable law and not be subject to any obstacles to registering a geographical indication (GI). Generally, an important requirement under the definition, is that the good identified by the GI needs to have a link to the geographical origin. This link may be determined by a given quality, reputation or other characteristic essentially due to the geographical origin. In many legislation a single criterion attributable to geographical origin is sufficient, be it a quality or other characteristic of the product, or only its reputation.

A request of protection for a geographical indication may be filed, depending on the applicable law, without assistance from an IP lawyer or specialized agent. However, in many countries an applicant whose residence or principal place of business is outside the country where the protection is sought must be represented by a lawyer or agent admitted to practice in that country. Information on the admitted lawyers and agents may be obtained directly from the national IP offices. A directory of IP offices is available on the WIPO website.

As the costs for filing for protection vary from country to country, it is best to contact your national (regional) IP office for details on the fee structure. If protection abroad is sought, in addition to the ordinary filing fees, you should take into account the translation costs and the costs of using a local agent. It’s worth remembering that in order to protect a GI abroad, there may be a requirement to first protect the GI in the country of origin.

Firstly the following are generally excluded from geographical indication protection:

• signs that do not qualify as geographical indications under the applicable law.

From a legal point of view, potential obstacles to successfully registering a geographical indication (GI) may include the following:

• Conflict with a prior mark.
• Generic character of the term that constitutes the GI.
• The existence of a homonymous geographical indication , the use of which would be considered potentially misleading as to the product’s true origin.
• The indication’s name being that of a plant variety or animal breed.
• The lack of protection of the GI in its country of origin.

The practical steps to be taken vary depending largely on the purpose and the geographical scope of the protection you desire.

In the broadest terms, if you are considering protection limited to the national level, then your first port-of-call should be your relevant intellectual property (IP) office or the national (regional) competent authority in charge of GIs. A directory of IP offices is available on the WIPO website.

If, however, you are considering protection in more than one territory, then WIPO’s Lisbon System could be one appropriate alternative, amongst others. See the question “Can I obtain geographical indication protection that is valid in multiple countries?” for more information and to learn about other alternatives.

Geographical indication rights are territorial. This means that these rights are limited to the country (or region) where protection is granted.

At present, no “world” or “international” geographical indication (GI) right exists. There are currently four main ways of protecting a geographical indication abroad:

• By obtaining protection directly in the jurisdiction concerned: In general, in order to protect a GI in their territory, many jurisdictions require that the GI already be protected in its country of origin. Once a GI is protected in its country of origin, it would be possible to seek its protection in other jurisdictions under the means of protection available in those jurisdictions. Contact your national intellectual property office to find out more.
• By taking advantage of bilateral agreements concluded between countries: Bilateral agreements are typically concluded between two countries on the basis of reciprocity. They may be limited to certain economic sectors or products, e.g. wine and spirit drinks, or form part of a wider trade agreement. Contact your national intellectual property office to find out more.
• Through WIPO’s Lisbon System for the International Registration of Appellations of Origin: The Lisbon System offers a means of obtaining protection for an appellation of origin already protected in one member state in the territories of all other members. This can be done through a single registration called “an international registration”. Find out more about the Lisbon System.
• Through the Madrid System for the International Registration of Marks (i.e. as a collective or certification mark): To avoid filing trademark applications in each and every country where protection is sought, it may be possible to file a single international application using WIPO’s Madrid System. Find out more about the Madrid System.

There is no comprehensive way to search all geographical indications registered throughout the world.

You can, however, contact the relevant national intellectual property office, which may or may not offer a searchable database of GIs registered in their territory. A directory of IP offices is available on the WIPO website.

Also, you can consult WIPO’s Lisbon Express database to search GIs registered under the Lisbon System.

You can use the WIPO Lex search engine to browse the intellectual property (IP) laws of WIPO, WTO, and UN members. Just select the country(ies) you’re interested in and choose “geographical indications” as a subject matter filter.

In addition, information on geographical indications may be provided by national or regional IP offices. A directory of IP offices is available on the WIPO website.

Consumers are paying more and more attention to the geographical origin of products and many care about specific characteristics present in the products they buy. In some cases, the “place of origin” suggests to consumers that the product will have a particular quality or characteristic that they may value. Geographical indications (GI) therefore function as product differentiators on the market, by enabling consumers to distinguish between products with geographical origin-based characteristics and others without those characteristics. Geographical indications can thus be a key element in developing collective brands for quality-bound-to-origin products. Consult the WIPO Lex database to browse relevant national legislation.

Protecting a geographical indication (GI) enables those who have the right to use the indication to take measures against others who use it without permission and benefit from its reputation (“free-riders”). A geographical indication’s reputation is a valuable, collective, and intangible asset. If not protected, it could be used without restriction and its value diminished and eventually lost.

Protecting a GI is also a way to prevent registration of the indication as a trademark by a third party and to limit the risk of the indication becoming a generic term.

In general, GIs, backed up by solid business management, can bring with them:

• Competitive advantage
• More added value to a product
• Increased export opportunities
• A strengthened brand