March 16, 2021
Following the making of The Agricultural Products, Food and Drink (Amendment etc) (EU Exit) Regulations 2020, which set out new rules and logos for the UK’s Geographical Indicator (GI) schemes to protect the geographical names of food, drink and agricultural products after the end of the Brexit transition period on 1 January 2021, the IPO has published Guidance on Trade Marks and Geographical Indications.
The Guidance is for businesses and organisations and covers the relationship between trade marks and GIs now that the Brexit transition period has ended.
From 1 January 2021, for the duration of the Northern Ireland Protocol, the UK GI schemes will protect products registered as UK GIs in England, Wales and Scotland (GB) and the EU GI schemes will protect products registered as EU GIs in Northern Ireland (NI) and the EU. Defra will remain responsible for the administration and enforcement of the schemes in NI.
When applying for a trade mark, the IPO’s trade mark examination will now search for both:
- GIs registered under the new UK schemes, protected in GB, and
- GIs registered under the EU schemes, protected in NI.
The relationship itself between trade marks and GIs remains unchanged, including the conditions where a trade mark may be refused where it conflicts with a GI through direct use or evocation.
The Guidance explains that a trade mark application will be refused where it conflicts with a GI that is in force anywhere in the UK, including either within NI or GB.
However, applicants will have the ability to overcome such refusal if they have no intention of operating within the geographical location where the GI is in force. To do so, applicants can voluntarily limit the territorial scope of the rights conferred by their trade mark.
This uses the existing provision at s 13(1)(b) of the Trade Marks Act 1994. It means the applicant will not be able to enforce the trade mark or market products bearing the mark in the geographical area excluded, but can benefit from the registration of their trade mark in the rest of the UK.
Where a trade mark conflicts with a GI that is in force across the whole of the UK (registered in NI through the EU scheme and in GB through the UK scheme) a territorial limitation will not overcome this objection.
However, an objection where the GI is in force may be overcome if the trade mark specifications are limited to comply with the specifications of the GI. For example, the mark “Rees Cornish Pasties” filed in respect of “pastry products” would be acceptable if the specification is limited to “pasties which comply with the regulations of the Protected Geographical Indication Cornish Pasty”. To access the Guidance, click here.