17 Sep 2018

Following publication of the 'agreed' text of the draft Withdrawal Agreement (the "Draft Text") between the United Kingdom ("UK") and the remainder of the European Union ("EU") on 19 March 2018, our intellectual property ("IP") team has produced a suite of briefings on key aspects of the likely implications of Brexit for IP rights and systems across the EU, to inform our clients what changes they will need to consider making to their existing IP strategies and protocols to continue dealing in post-Brexit UK and Europe. The topic of this note is how Brexit will impact the protection of geographical indications. 

This note has also been updated following publication by the UK Government on 24 September 2018 of its guidance to businesses, organisations and individuals on protecting geographical food and drink names in the event of a ‘No Deal’ Brexit (“No Deal Guidance”). 

What are geographical indications?

In the EU, protection can be given to certain signs which indicate that a product has a specific geographical origin provided such possesses certain qualities or meets specific standards. The sign usually includes the name of the geographical area, and can be used by all organisations which manufacture the product in the defined way. 
The term "geographical indications" include:

  • Protected Geographical Indications ("PGIs") – which demonstrate a link to the territory where at least one of the stages of production, processing or preparation takes place
  • Protected Designations of Origin ("PDOs") – which refer to goods that are produced, processed and prepared in the designated territory, so having closer links with the area.

The term therefore encompasses both PGIs and PDOs. They aim to protect legitimate interests of consumers and producers, ensuring the terms are used fairly, thereby preventing potentially misleading practices.
Currently, there are EU regulations which protect geographical indications for wines, aromatised wines, spirit drinks, and agricultural products and foodstuffs. Examples include Champagne, Scotch whisky, and Cornish pasty. 

Post-Brexit position on geographical indications 

European Union law regulates the use and registration of geographical indications. As currently drafted, Article 50(2) of the Draft Text enables geographical indications protected i.e. registered by the last day of the transition period (31 December 2020) to continue beyond the UK's exit from the EU with the same level of protection in the UK without any re-examination. However, this provision has not yet been agreed and discussions are still ongoing as to whether this wording will form part of the final agreement. 

As the position on geographical indications following Brexit is not yet agreed, it is uncertain whether Article 50(2) as currently drafted will be implemented. The possible options include:

  1. The UK continues to recognise the current EU protected geographical indications and any post-Brexit EU geographical indications.
  2. The UK continues to recognise the current EU protected geographical indications, but after the end of the transition period, any new EU geographical indications will not be recognised in the UK.
  3. The UK ceases to recognise all EU protected geographical indications. 

However, if it is agreed, there would be no change to how individuals and businesses are allowed to control and/or use signs which are already protected geographical indications.

An independent UK scheme 

However, faced with the above options, the No Deal Guidance suggests that the UK may choose to establish its own system for protecting geographical indications, broadly mirroring the current EU regime, which would be no more burdensome to producers as well as  compliant with the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property.  

The No Deal Guidance anticipates that protection for the 86 UK protected geographical indications – including Kentish ale, Scottish wild salmon and Welsh beef, would continue under the current EU system. The UK scheme would have a new UK logo which, according to the No Deal Guidance, is likely to replace the EU logo, whether or not the UK leaves EU with an agreement in place, and producers wishing to use the logo will need to make preparations to comply with any new rules. 

Practical tip: The UK Government is due to release further information on the independent UK scheme in early 2019. Interested parties should keep up to date with any guidance produced, particularly regarding compliance with the rules and use of the new UK logo.

Impact on EU geographical indications

As the text of Article 50(2) is not currently agreed, the No Deal Guidance suggests that, as per Option 3 (above), the UK would no longer be required to recognise EU geographical indication status. Signs formerly registered as EU PGIs and PDOs would cease to have such protection in the UK. 

Unless EU producers apply for UK geographical indication status, they may become terms that are free for all traders to use, without those traders having to follow the necessary production, processing or location requirements of the geographical indications. 

Faced with such a prospect, users of formally protected geographical indications might consider applying to register the relevant signs as UK trade marks thereby obtaining a monopoly over such signs. 

Practical tip: If your business uses a sign which includes a protected EU geographical indication, it would be prudent to review your use of the sign, to monitor the general use of the protected sign in the marketplace, keep up to date with the discussions and negotiations surrounding Article 50(2) and, subject to any rules relating to the registration of PGIs and PDOs, register your relevant signs as trade marks.  

EU recognition of UK geographical indications

Not specifically mentioned in the Withdrawal Agreement, the No Deal Guidance suggests that all current UK geographical indications would continue to be protected under the EU scheme. 

Practical tip: If this is not the case, UK producers should consider: 

  • submitting an application to the European Commission as ‘third country’ producers, if they wish to regain the protection offered under the EU scheme; and/or
  • protecting their products by applying for an EU trade mark, collective mark or certification mark. 

International recognition of UK geographical indications

The No Deal Guidance stipulates that the UK Government is working with its global trading partners to accommodate the protection of UK geographical indications in third countries, and expects – irrespective of the Brexit negotiations – that UK geographical indications currently named in and protected by EU free trade and other sectoral agreement will continue to be protected. 

How did we arrive at Brexit? 

A truly unprecedented process began on 29 March 2017, when the United Kingdom invoked Article 50 of the Treaty for the Functioning of the European Union ("TFEU"), in response to the referendum held in June 2016. 

Never before had a Member State left the European Union. 

Since it joined in January 1973, the UK has operated under the fundamental principle that European laws are supreme and have precedence over, if not direct effect on, national law. Brexit therefore presents, both for the UK and the EU, an enormous legislative challenge in that it is estimated that the accumulated body of European law and rules comprises over 12,000 regulations on top of other forms of legislation.

In few areas will Brexit be more disruptive than for IP rights. There has been considerable harmonisation of IP rights and remedies across the 28 Member States. Moreover, European wide trade mark and design registrations have been created, the first truly multinational unitary property rights. 

Brexit will change all of this. 

At the time of publication, many questions remain about the possible impact of Brexit whether in the sphere of IP or otherwise. Certainly, before the publication of the 'agreed' text of the Draft Text on 19 March 2018, it had not been realistic to provide much by way of constructive advice and detailed guidance. 

Following its release, the IP team of Womble Bond Dickinson analysed the published Draft Text in order to produce this suite of briefing notes on key aspects of the likely implications of Brexit for IP rights and systems across the European Union, to inform our clients on what they will need to consider changing in their existing IP strategies and protocols to continue dealing in post-Brexit UK and Europe. 

It should be noted the Draft Text confirms the intention of the signatories that, although the UK will leave the EU on 29 March 2019, there will be an extensive transition period lasting until 31 December 2020.