Marques 2019: overcoming ‘fear’ of GIs
“Don’t be afraid of GIs,” was the message at a panel discussion at Marques 2019 in Dublin yesterday, September 19.
The session was aimed at explaining the basic principles of geographical indication (GI) protection at the national, international, and EU levels.
As chair Ortrun Günzel, partner at df-mp in Munich, noted, trademark practitioners sometimes “fear” GIs.
Part of the reason for this, said Jürg Simon, partner at Lenz & Staehelin in Zurich, was the “huge basket of law dealing with GIs”, which varies greatly at the national and international levels.
“You don’t have to be afraid to tackle the subject,” Günzel reassured the audience. One speaker who was well placed to speak to her experience of GIs as a valuable tool for brandowners was Carleen Madigan, legal adviser at the Irish Whiskey Association.
The basic function of the IWA is to “protect Irish whiskey producers from unfair competition,” she said.
But she was keen to stress that from her perspective, GIs are not just an IP issue.
“It’s not just about protecting our IP rights, it’s about protecting our culture, our heritage and employment,” she said, highlighting GIs’ unique place in the wider framework of IP protection.
A cornerstone of the law around GIs is the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. This treaty, overseen by the World Intellectual Property Organization (WIPO), has yet to fully come into force.
According to the European Commission, the act will provide a way to “secure protection for appellations of origin through a single registration”.
Once the EU has fully acceded to the treaty, the act will provide “rapid, high-level and indefinite protection of European GIs in all current and future parties” to the agreement, the Commission has said.
Marcus Höpperger, senior director of the department for trademarks, industrial designs and GIs at WIPO, was able to provide an update on the treaty’s progress.
He said the EU had agreed “in principle” to adhere to the Geneva Act either by the end of the year or “more likely”, early next year, a move which Madigan said the IWA was “very supportive” of.
Simon added that Switzerland was expected to fully ratify the act within the next three years.
The greatest unknown with respect to the protection of GIs in Europe remains Brexit, the panel agreed.
The IWA has taken a keen interest in the UK’s plans for a new GI system post-Brexit. Irish GIs will continue to enjoy full protection in the UK, even in a no-deal scenario, but this is “not the case for all EU GIs,” Madigan said.
She said there was no “guarantee that the EU will continue to protect UK GIs” in the event of no-deal.
As Günzel noted, this was a “very different” situation than with respect to trademarks, where the guidance from both sides has given rights owners a much greater degree of certainty.
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