How can a craft GI make a lawyer work faster? By adding more complexity

The EUIPO’s craft and GI regulation presents many challenges, but provides a new and improved string to IP’s bow, finds Sarah Speight at the EUIPO conference in Alicante.

If you’re wondering whether the EU will be inundated with applications for geographical indications (GIs) after new regulation kicks in next year, the answer is “maybe not”.

This is according to one speaker on the second day of the EU Intellectual Property Office (EUIPO) 5th Edition IP Case Law Conference 2024 in Alicante, which concluded yesterday, April 30.

But don’t be disheartened, as the new regulation should provide many cross-border benefits, according to discussions in Crafting the Future: New perspectives for Geographical Indications.

Panellists in four discrete presentations within this session analysed the new Craft GI Regulation, which is currently “booting up” after coming into force in November 2023.

After years in the making, the EU voted in Regulation (EU) 2023/2411 in September 2023, which will provide unified GI protection for regional non-agricultural crafts and industrial products made within member countries, as well as internationally.

Products such as Parmesan cheese, Prosecco, Murano glass, Donegal tweed, and Solingen cutlery will receive protection, as well as natural stones, woodwork, jewellery, lace, porcelain, and hides and skins. Products need to involve at least one production step in their region of origin.

However, producers—which could be a single producer, a producer group or a local or regional authority or private entity—will have to wait until January 1, 2025 to benefit from the new regulation.

This, according to Marion Walsmann—rapporteur for the new GI rules speaking at a press conference shortly after the vote—is to allow EU authorities to put the required measures in place and to avoid putting “too much pressure on the national authorities”.

Speaking to WIPR earlier this year, João Negrão—EUIPO executive director—noted that “expectations are high” and that “we need to deliver” on the new regulation.

Because this essentially creates a new type of IP right, the onus is on the EUIPO to “develop skills internally” to be able to deal with these applications, he added.

Globalised GIs

That process of preparation was the topic of conversation during the panel sessions.

But what of the interaction between EU and global (third country) producers when it comes to GIs under the new regulation, not to mention the interplay between GIs and EU certification and collective marks?

Dev Gangjee, professor of intellectual property law at Oxford Law Faculty, had these questions covered in Can Craft and Agri GIs successfully meet the challenges of globalisation?

“We're really asking how GIs land and get protected abroad,” he said. “And then we're asking about how third country GIs land in the EU and get protected here. And why these two dynamics are important.

“For GIs to be successful economically, it helps to access export markets—you need to travel, you need to find new markets. And the question is not just economically relevant. In terms of international protection, we have a new [Craft GI] register booting up in the EU.”

One of the questions that might be on people’s minds, said Ganjee, is ‘are we going to see an influx of a lot of new GIs heading into the EU?’

“If you look at some of the statistics on registered GIs around the world, the answer seems to be, well, maybe not.”

World Intellectual Property Organization(WIPO)statistics show that as of 2022, there were 15,000 registered GIs worldwide—although this figure could be taken with a pinch of salt given variables such as bilateral agreements or home country registrations, he added.

Scope of protection

One of the challenges presented under the new regulation is the scope of protection, explained Ganjee, since “the law is a little obscure”.

For example, do the two main pathways to protection (direct or bilateral) lead to the same end result in terms of the scope of protection, or do they lead to different phases and scopes of protection?

“The answer seems to be yes, we have differences,” said Ganjee. “Nobody seems to have looked at that in close detail.”

But if you go through an agreement, you end up negotiating the terms of protection, he went on.

“And what's the usual dynamic in this agreement? The EU says, ‘we love generous protection for GIs’. The country that we’re negotiating with could be Canada, South Korea, Japan or the US.

“They're saying, ‘well, we love GI products. And we even love strong cheeses, but your GI law may be a little too strong for us.’

“So we might get a slightly more diluted and watered down version of protection.”

Are GIs the new trademarks?

Finally, he explored the possibility of GIs replacing trademarks as a form of protection. For example, there are currently about 160 live trademark registrations for products from Cremona, Italy, using the name ‘Cremona’.

“We're getting to the stage where we have things that have lived in trademark law, now being encouraged to sidestep into the GI system,” he said.

“Historically, GIs have lived in trademark law or unfair competition law, or on some kind of sui generis international level, because there hasn't been an EU level option.”

But, under the new regulation, “this is going to be something much more tricky”, he said.

There are “lots of pre-existing rights, many of them living as trademarks, many of them living as individual trademarks”, that owners will attempt to register as GIs.

While that takes us again to the challenges, it presents opportunities for working faster, he concluded.

Other speakers during the session on GIs were Eun-Joo Min, director, WIPO Judicial Institute, who delivered the keynote address, Exploring new paradigms of intra-judicial connectivity in IP.

The panel leader was Anke Moerland, associate professor of intellectual property law at Maastricht University.

Other topics discussed were:

• The New Craft GI: Opportunities and Challenges with Katarina Kompari, IP legal specialist and team leader of the EUIPO GI reform team and the Knowledge Circle for GIs and Collective rights;
• Broadening Protection in Geographical Indications Law with Pilar Montero, commercial law professor, director of IP and digital innovation, University of Alicante; and
• Too good to be true? – Exploring triangulation between GI Regulations and certification or collective marks with Virginia Melgar, chairperson of the Fifth Board of Appeal, EUIPO.

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