The enactment of the new Industrial Property Law, announced for the fourth quarter of 2021, may bring a revolution in many matters. One of the things to be changed is the procedure for registering national geographical indications, used to mark craft and industrial products. Little is known yet other than the changes are supposed to go in the direction of simplification of the procedure and increasing its attractiveness for the entrepreneurs. Apart from that, it has also been announced that a uniform regulation will be created for agricultural products and foodstuffs, spirits and wines. Protection of these products is regulated by EU regulations, but certain issues, such as the national part of the registration procedure or checking compliance of products with specifications, have been left to the legislatures of individual Member States. Currently, these regulations are scattered in Poland across three sectoral laws – the 2004 Act on Registration and Protection of Names and Designations of Agricultural Products and Foodstuffs and on Traditional Products, the 2011 Act on Production and Bottling of Wine Products and the 2006 Act on Production of Spirits Drinks and Registration and Protection of Geographical Indications of Spirits Drinks. These regulations are to be made more consistent. The adoption of the new regulations is also scheduled for the fourth quarter of 2021.
What are geographical indications?
Geographical indications, like trademarks, serve to distinguish goods in trade. Trademarks indicate the origin of goods from a specific enterprise and thus enable consumers to purchase goods whose producer has a good reputation. The source of this reputation may be the consumer’s own experience, having previously purchased goods from the same trader and being satisfied with the purchase, as well as recommendations from others, and the manufacturer’s own advertising. However, the quality of a product may depend not only on who produced it, but also on where it was produced. In the case of agricultural products in particular, quality is often determined by specific geographical conditions related to climate, soil characteristics or long-established traditions.
We distinguish between ordinary and qualified geographical indications. An ordinary designation is simply an indication of where the product comes from without pointing out its specific quality associated with it. Such indications, similarly to unregistered trademarks, are protected under the provisions of the Combating Unfair Competition Act (CUCA). Pursuant to Article 8 of the CUCA, it is an act of unfair competition to mark goods or services with a false or deceptive geographical indication pointing directly or indirectly to the country, region or place of their origin, or to use such an indication in commercial activities, advertising, commercial letters, bills or other documents.
Qualified indications – the Polish and EU systems
Qualified designations, on the other hand, indicate the origin of a good and its specific characteristics related to that origin. Such indications are subject to registration and are regulated at both national and EU level. Currently, EU designations are the most important in practice, as they are reserved for the designation of agricultural products and foodstuffs, and their characteristics depend most on the place of origin. On the other hand, national indications may be used to designate craft and industrial products, such as lace from Koniaków, porcelain from Ćmielów or kierpce (traditional shoes). National geographical indications are registered by the Polish Patent Office. These types of indications are currently less popular, although this may change. It is planned to adopt a new Industrial Property Law which, among other things, would simplify the procedure of registration of national geographical indications to encourage more entrepreneurs to use this solution.
The EU quality schemes for agricultural products and foodstuffs are regulated in the Regulation 1151/2012 and this system consists of the Protected Designation of Origin, Protected Geographical Indication and Guaranteed Traditional Speciality. They differ in the degree of connection between the product properties and the geographical area. In the case of Guaranteed Traditional Speciality, the product does not have to be linked to a specific area, while its traditional composition and production method is protected. Poland has so far registered 44 agricultural products and foodstuffs, such as oscypek (cheese from Tatra mountains), rogal świętomarciński (croissant/bagel from Poznań), jabłko grójeckie (apples from Grójec area) or cebularz lubelski (bakery product with onion from Lublin). Geographical indications of spirit drinks are regulated separately, in Regulation 2019/787. Two Polish designations have been registered – Polish Vodka and Herbal vodka from the North Podlasie Lowland aromatised with an extract of bison grass. The full list of protected products can be viewed in the online eAmbrosia register. Applications for registration of EU designations are submitted through the Ministry of Agriculture.
First glance – how do appearances of trademarks and geographical indications differ?
Trade marks can take any form. It can be a word, a graphic, the shape of goods, or even a sound. In the case of geographical indications, only words are protected. They must indicate the geographical origin of the product, either directly by indicating the country, region or locality (e.g. bryndza podhalańska, parmigiano reggiano, champagne) or indirectly (e.g. oscypek, feta).
Trademark and geographical indication – who can use them?
As a rule, a trademark is used only by one entrepreneur entitled to register it. There are also collective marks in Poland (used by an organisation representing the interests of entrepreneurs and its members, or by a legal entity governed by public law and persons authorised by it) and guarantee marks (distinguishing goods certified by the owner of the mark and used by entities meeting the relevant criteria). However, collective and guarantee marks are much less used than individual marks.
Geographical indications, on the other hand, are intended to be used simultaneously by a several entities. The application to register a designation is submitted by a group of producers from a given region (although in exceptional cases it may also be a single person). The registered designation may be used by anyone who meets the requirements set out in the product specification. The product must be produced in the defined geographical area and in the defined manner to ensure the highest quality. It is not necessary for the person who wishes to use the geographical indication to be a member of the group which submitted the indication for registration. However, they must obtain a quality certificate confirming compliance of the production process with the requirements set forth in the specification. Such certificate is issued in Poland by the voivodship inspector or the certification body authorised by Ministry of Agriculture. The inspection body is selected by the producer. The quality certificate specifies the date of its validity.
Protection of geographical indications
The protection of EU geographical indications is quite broad. Not only the unauthorised use of identical indications is prohibited, but also any kind of misuse, imitation or evocation (especially when the protected name is translated or accompanied by terms such as: ‘style’, ‘type’, ‘method’, ‘according to the recipe’, ‘imitation’), as well as any other practice likely to mislead consumers as to the true origin of the product. In its judgment of 2 May 2019 (Case C-614/17), the Court of Justice held that ‘any evocation of a registered name’ must also be understood to include any figurative sign that is likely to bring to the consumer’s mind the products covered by the protected indication. Graphic signs may directly evoke the image of the products because of their conceptual proximity. The case concerned queso manchego, a Spanish cheese from the La Mancha region, and figurative designations referring to the landscapes of the region and the character Don Quijote commonly associated with La Mancha. In its judgment of 17 December 2020 (Case C-490/19) the Court of Justice ruled that in certain circumstances EU law on geographical indications prohibits the reproduction of the shape or appearance of a protected product. The case concerned the French cheese Morbier, whose distinctive design feature is a horizontal black line dividing the cheese into two parts. A competing cheese manufacturer did not use any word markings similar to the protected name, but imitating the appearance of the cheese was considered a practice that could mislead consumers.
Geographical indications are an excellent tool for protecting products whose quality and reputation depend on their place of origin. They can be used to protect both agricultural products and foodstuffs, as well as handicraft products. The multitude of indications and procedures for obtaining them may make the uninitiated dizzy. It is possible that the procedures will be partly simplified by the announced changes in the law. Therefore, we are waiting impatiently for the developments.