Information for Review under TRIPS Art. 24.2 (Checklist of Questions on GIs) - View details of the document

European Union

Protection of geographical indications is provided in the United Kingdom through various statutory instruments including the Trade Marks Act 1994, the Trade Descriptions Act 1968; through European Community law including EC Regulations No. 2081/92 (covering agricultural products and foodstuffs and providing for the registration of protected designations of origin (PDOs) and protected geographical indications (PGIs)), No. 1601/91 and No. 1576/89 as amended by Regulation No. 3378/94; and also through the common law tort of passing off. Registration of a geographical indication is sometimes necessary. Also EC Regulations No. 822/87, No. 823/87 and No. 2392/89 for wines.

A passing off action can be brought in respect of a geographical indication for any product. Similarly, action under the Trade Marks Act 1994 is possible in respect of any geographical indication that is registered except where protection is also sought through EC Regulation No. 2081/92 (covering agricultural products and foodstuffs). Protection for geographical indications for wines and spirits is available through EC Regulations No. 1601/91 (wines) and No. 1576/89 (spirits) as implemented in the United Kingdom by the Common Agriculture Policy (Wine) Regulations 1996 and the Spirits and Drinks Regulations 1990 and also through the Scotch Whisky Act 1988. Protection under the Trade Descriptions Act 1968 is available to all products.

Protection under the Trade Marks Act 1994 and under the common law tort of passing off is available for geographical indications for services. The Trade Descriptions Act 1968 also applies to services.

The requirements of Articles 22.2 and 23.1 are met by the common law tort of passing off. Further legal means are provided under Section 3 of the Trade Descriptions Act 1968, Section 10 in particular of the Trade Marks Act 1994 and, in respect of Article 23.1 of the TRIPS Agreement, by Article 72a of Council Regulation No. 822/87, Article 40 of Council Regulation No. 2392/89, Article 3 of Council Regulation No. 2333/92, Article 11a of Council Regulation No. 1576/89 and Article 10a of Council Regulation No. 1601/91 as implemented in the United Kingdom by the Common Agriculture Policy (Wine) Regulations 1996 (see especially Sections 3 and 5) and the Sprits Drinks Regulations 1990 (see especially Sections 2 and 3).

A passing off action is brought in accordance with the procedures outlined in the United Kingdom's responses to the Checklist of Issues on Enforcement (IP/C/5).14

Relevant passing off cases Champagne: J. Bollinger v Costa Brava Wine Co. Ltd. [1960] RPC 16; Taittinger SA v Allbey Ltd. [1993] FSR 641 Scotch Whisky: John Walker and Sons Ltd. v Henry Ost and Co. Ltd. [1970] RPC 489. Swiss chocolate: Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd. [1997] Times 25 November Trademarks Certification/collective marks: - Stilton (cheese) - Shetland (wool) Protected designations of origin Cheeses: - Beacon Fell traditional Lancashire cheese - Bonchester cheese - Buxton blue - Dovedale cheese - Single Gloucester - Swaledale cheese/Swaledale ewes' cheese - White Stilton cheese/Blue Stilton cheese - West Country Farmhouse Cheddar cheese Fresh meat and offal: - Orkney beef - Orkney lamb - Shetland lamb Fruit, vegetables and cereals: - Jersey Royal potatoes Other products of animal origin: - Cornish clotted cream Protected geographical indications Beer: - Newcastle brown ale - Kentish ale and Kentish strong ale - Rutland bitter Ciders: - Gloucestershire cider/perry - Herefordshire cider/perry - Worcestershire cider/perry Cheeses: - Teviotdale cheese Fresh fish, molluscs and crustaceans and products derived therefrom: - Whitstable oysters Fresh meat and offal: - Scotch beef - Scotch lamb EU legislation See responses from the EC reproduced in the present document.

[Answer 6: EC Responses

Wines

Champagne, Sherry, Porto, Chianti, Samos, Rheinhessen, Moselle luxembourgeoise, Mittelburgenland, etc...

As a first step such geographical indications are recognised at the level of a Member State. Subsequently, they are recognised at a Community level following Article 1, paragraph 3 of Regulation (EEC) No. 823/87.  They are protected according to Article 15, paragraph 4 of Regulation (EEC) No. 823/87 and Article 40 of Regulation (EEC) No. 2392/89.  They are registered and published in the Official Journal of the European Communities No. 344, p. 110.

Spirits

Cognac, Brandy de Jerez, Grappa di Barolo, Berliner Kümmel, Genièvre Flandres Artois, Scotch Whisky, Irish Whiskey, Tsikoudia from Crete, etc...

They are recognized by the Community pursuant to Article 5, paragraph 3 of Regulation (EEC) No. 1576/89. They are protected according to Article 5(3)(b) of the said Regulation.  They are registered and published in Annex II of that same Regulation.

Other products

Scottish beef, Cabrales, Roquefort, Gorgonzola, Azeite de Moura, Olive de Kalamata, Opperdoezer Ronde, Wachauer Marille, Danablu, Lübecker Marzipan, Svecia, etc ..

Registration pursuant to Article 17 of Regulation (EEC) No. 2081/92 - simplified procedure for names already legally protected or established by use in Member States.

Queijo do Pico, Coquille Saint-Jacques des Côtes-d’Armor, Jamón de Huelva, Lammefjordsgulerod, etc ...

Registration pursuant to Articles 5, 6 and 7 of Regulation (EEC) No. 2081/92 - normal procedure.

Protection and criteria required in referred Articles 2 (definitions) and 4 (specification) are the same in both procedures.]

The protection provided under the Trade Marks Act 1994 in respect of Article 23.2 is provided in respect of all geographical indications.

Article 13 of EC Regulation No. 2081/92 (relating to foods and agricultural products) provides that registered names shall be protected inter alia against any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation" or similar. United Kingdom legislation provides for enforcement of the EC regulations covering this point in relation to wines and spirits indications.

EC Regulation No. 3378/94 defines a "geographical designation" thus: "any indication identifying a product as originating in the territory of a third country which is a Member of the World Trade Organization, or in a region or locality of that territory, where a quality, reputation or other specific characteristic of that product can essentially be attributed to that geographical origin". EC Regulation No. 2081/92 (covering agricultural products and foodstuffs) gives definitions for both designations of origin and geographical indications. Geographical indications have not been defined for wines and spirits in the Community. Neither the Trade Marks Act 1994 nor the Trade Descriptions Act 1968 provide a definition of geographical indication. However, detailed guidance is provided in the Trade Marks Registry Work Manual for trademark examiners on the acceptability of geographical indications for registration as trademarks.

No.

The requirements for registering a geographical indication as a trademark are the same as for any other trademark, except for certification marks and collective marks. Such marks allow the registration of geographical indications and they may be refused on the same grounds as ordinary trademarks and also if the public is liable to be misled in relation to the character or significance of the mark. Regulations governing the use of certification marks and collective marks must be provided by the applicants detailing inter alia the characteristics to be certified by the mark (certification marks). Detailed guidance is provided in the Trade Marks Registry Work Manual for trademark examiners on the acceptability of geographical indications for registration as trademarks. Protected Geographical Indication (PGI) registration is open to products which must be produced or processed or prepared within a geographical area and have a reputation, features or certain qualities attributable to that area. Protected Designation of Origin (PDO) registration is open to products which are produced, processed and prepared within a particular geographical area, and with features and characteristics which must be due to the geographical area. The methods used to produce the product must be unique in that area. Most foods intended for human consumption can register including meat, dairy and fish products, fruits and vegetables, beer, beverages made from plant extracts, bread, pastries, cakes, biscuits and confectionery. Other products which can also be registered are as follows: natural mineral water and spring water, natural gums and resins, hay, essential oils (e.g. lavender oil). A name cannot be registered as a PGI or PDO if a similar trade mark already exists which, because of its reputation and renown or the length of time it has been used, might lead to confusion as to the true identity of the product, nor can a name that has become generic be registered as a PGI or PDO. No specific criteria are used for wines and spirits in the United Kingdom. Most are long-standing and have long since been included in EU legislation. Any requests for new geographical indications would be examined on their merits and then put to the Commission.

Under the Trade Marks Act 1994, there is no evaluation of the characteristics of a geographical indication. This is also the case for PGI/PDO registrations. Traditional conditions of production for wine and spirits take into account the human creativity involved in the making of a specific product and therefore include human factors.

No.

No authority makes such a determination in respect of protection provided under the Trade Marks Act 1994, the Trade Descriptions Act 1968 and passing off. The specification of a trademark registration may be restricted as to the geographical area to which it applies. For PGI and PDO registration, the geographical region or area in question must be defined in the application. The Ministry of Agriculture, Fisheries and Food (MAFF) defines the geographical region subject to approval by the Commission for wines and the Agricultural Council for spirits and aromatized wines.

No.

Yes. See also the answers to questions 1, 2 and 8 above.

[Answer 1: Protection of geographical indications is provided in the United Kingdom through various statutory instruments including the Trade Marks Act 1994, the Trade Descriptions Act 1968; through European Community law including EC Regulations No. 2081/92 (covering agricultural products and foodstuffs and providing for the registration of protected designations of origin (PDOs) and protected geographical indications (PGIs)), No. 1601/91 and No. 1576/89 as amended by Regulation No. 3378/94; and also through the common law tort of passing off. Registration of a geographical indication is sometimes necessary. Also EC Regulations No. 822/87, No. 823/87 and No. 2392/89 for wines.]

[Answer 2: A passing off action can be brought in respect of a geographical indication for any product. Similarly, action under the Trade Marks Act 1994 is possible in respect of any geographical indication that is registered except where protection is also sought through EC Regulation No. 2081/92 (covering agricultural products and foodstuffs). Protection for geographical indications for wines and spirits is available through EC Regulations No. 1601/91 (wines) and No. 1576/89 (spirits) as implemented in the United Kingdom by the Common Agriculture Policy (Wine) Regulations 1996 and the Spirits and Drinks Regulations 1990 and also through the Scotch Whisky Act 1988. Protection under the Trade Descriptions Act 1968 is available to all products.]

[Answer 8: EC Regulation No. 3378/94 defines a "geographical designation" thus: "any indication identifying a product as originating in the territory of a third country which is a Member of the World Trade Organization, or in a region or locality of that territory, where a quality, reputation or other specific characteristic of that product can essentially be attributed to that geographical origin". EC Regulation No. 2081/92 (covering agricultural products and foodstuffs) gives definitions for both designations of origin and geographical indications. Geographical indications have not been defined for wines and spirits in the Community. Neither the Trade Marks Act 1994 nor the Trade Descriptions Act 1968 provide a definition of geographical indication. However, detailed guidance is provided in the Trade Marks Registry Work Manual for trademark examiners on the acceptability of geographical indications for registration as trademarks.]

The Common Agriculture Policy (Wine) Regulations 1996 and the Spirits Drinks Regulations 1990 provide enforcement of the EC Regulations which only provide protection if the geographical indication is protected in the country of origin. Otherwise no.

EC Regulation No. 2081/92 (covering agricultural products and foodstuffs) distinguishes between Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI). United Kingdom legislation for wines and spirits does not define these terms. However, it provides for enforcement of EC definitions. See also the answer to question 8 under I above.

[Answer 8: EC Regulation No. 3378/94 defines a "geographical designation" thus: "any indication identifying a product as originating in the territory of a third country which is a Member of the World Trade Organization, or in a region or locality of that territory, where a quality, reputation or other specific characteristic of that product can essentially be attributed to that geographical origin". EC Regulation No. 2081/92 (covering agricultural products and foodstuffs) gives definitions for both designations of origin and geographical indications. Geographical indications have not been defined for wines and spirits in the Community. Neither the Trade Marks Act 1994 nor the Trade Descriptions Act 1968 provide a definition of geographical indication. However, detailed guidance is provided in the Trade Marks Registry Work Manual for trademark examiners on the acceptability of geographical indications for registration as trademarks.]

See the answer to question 14 under I above.

[Answer 14: No.]

Applications for PGI and PDO registrations for foods must be put forward by groups of producers. Such groups may include other interested parties. However, individuals can put forward applications if: - local and traditional methods and practices are used; and - the geographical area has characteristics which differ from neighbouring areas; or - the product has characteristics which are different to those of similar products. Producers who are not part of the original applicant group, but who can show that their product conforms fully with the registered specification, may use the registered name. A governmental organization must make the recognition for wine and spirits. Private entities can own trademark rights.

Ministry of Agriculture, Fisheries and Food (MAFF) for foods and agricultural products (applications sent to European Commission for consideration), wines and spirit drinks. United Kingdom Trade Marks Registry for trademarks. Also the Office for Harmonization of the Internal Market (OHIM) for Community trademarks.

Applications for PGI or PDO registrations must be put forward by groups of producers or, under certain circumstances, individuals. Trademark owners must apply for registration of their marks. Protection of geographical indications for wines and spirits takes place ex officio.

Application to register a trademark (covering one class of goods or service): £200; fee for each additional class of goods or service; £50; renewal of trademark registration: £200 (on the 10th anniversary of the filing date and every ten years after that); fee for each additional class of goods or services: £50; additional fee for late payment: £50. All products registered as PGI or PDO will be subject to inspection to ensure that the requirements of the registered specification are met. Applicants must nominate an inspection body. Participants must meet the cost of inspections. For wines and spirits there are no fees.

No. There is no specific application procedure for wines and spirits. See also the answer to question 10 above.

[Answer 10: The requirements for registering a geographical indication as a trademark are the same as for any other trademark, except for certification marks and collective marks. Such marks allow the registration of geographical indications and they may be refused on the same grounds as ordinary trademarks and also if the public is liable to be misled in relation to the character or significance of the mark. Regulations governing the use of certification marks and collective marks must be provided by the applicants detailing inter alia the characteristics to be certified by the mark (certification marks). Detailed guidance is provided in the Trade Marks Registry Work Manual for trademark examiners on the acceptability of geographical indications for registration as trademarks. Protected Geographical Indication (PGI) registration is open to products which must be produced or processed or prepared within a geographical area and have a reputation, features or certain qualities attributable to that area. Protected Designation of Origin (PDO) registration is open to products which are produced, processed and prepared within a particular geographical area, and with features and characteristics which must be due to the geographical area. The methods used to produce the product must be unique in that area. Most foods intended for human consumption can register including meat, dairy and fish products, fruits and vegetables, beer, beverages made from plant extracts, bread, pastries, cakes, biscuits and confectionery. Other products which can also be registered are as follows: natural mineral water and spring water, natural gums and resins, hay, essential oils (e.g. lavender oil). A name cannot be registered as a PGI or PDO if a similar trade mark already exists which, because of its reputation and renown or the length of time it has been used, might lead to confusion as to the true identity of the product, nor can a name that has become generic be registered as a PGI or PDO. No specific criteria are used for wines and spirits in the United Kingdom. Most are long-standing and have long since been included in EU legislation. Any requests for new geographical indications would be examined on their merits and then put to the Commission.]

Applications for PGI and PDO registrations must include inter alia an indication as to the category of the product, the main characteristics of the product (size, shape, flavour, etc.), the method of production, background information (including whether there have been any significant technological changes to the specification of the product in recent years and what they are) about the product and labelling information, if applicable. Applications for the registration of trademarks must include, inter alia, a statement of the goods or services in relation to which it is sought to register the trademark as well as a specification of the class in Schedule 4 of the Trade Marks Rules 1995 to which it relates and a representation of the mark. See also the answer to question 21 above.

[Answer 21: No. There is no specific application procedure for wines and spirits. See also the answer to question 10 above.]

Applications for PGI and PDO registrations must specify the product name; applicant details; names and addresses of group members, together with their connection to the product; a definition of the geographical area; an explanation of how that area differs from neighbouring areas (if applicable); whether the product is produced, processed, prepared or its raw materials originate in the defined area, and if not what other areas are involved; a list of raw materials and their source areas; a description of how the main characteristics are linked to the geographical area and influenced by its environment; whether the product and its specification are protected by any national or European certification schemes, specifying the schemes; the name of a nominated inspection body; these are in addition to the details listed in the answer to the previous question. Further to the details in the answer to the previous question: trademark applicants must provide a request for registration of the trademark and the name and address of the applicant. See also the answer to question 21 above.

[Answer 21: No. There is no specific application procedure for wines and spirits. See also the answer to question 10 above.]

In applications for both PGI/PDO registrations and trademarks, the category or class of goods must be specified. There is no recent experience in the wines and spirits sector. Geographical indications are generally long established and set out in the EC Regulations.

PGI/PDO: Article 7 of EC Regulation No. 2081/92 provides for opposition: 1. Within six months of the date of publication in the Official Journal of the European Communities referred to in Article 6(2), any member State may object to the registration. 2. The competent authorities of the member States shall ensure that all persons who can demonstrate a legitimate economic interest are authorized to consult the application. In addition and in accordance with the existing situation in the member States, the member States may provide access to other parties with a legitimate interest. 3. Any legitimately concerned natural or legal person may object to the proposed registration by sending a duly substantiated statement to the competent authority of the member State in which he resides or is established. The competent authority shall take the necessary measures to consider these comments or objection within the deadlines laid down. 4. A statement of objection shall be admissible only if it: - either shows non-compliance with the conditions referred to in Article 2; - or shows that the proposed registration of a name would jeopardize the existence of an entirely or partly identical name or trademark or the existence of products which are legally on the market at the time of publication of this Regulation in the Official Journal of the European Communities; - or indicates the features which demonstrate that the name whose registration is applied for is generic in nature. 5. Where an objection is admissible within the meaning of paragraph 4, the Commission shall ask the member States concerned to seek agreement among themselves in accordance with their internal procedures within three months. If: (a) agreement is reached, the member States in question shall communicate to the Commission all the factors which made agreement possible together with the applicant's opinion and that of the objector. Where there has been no change to the information received under Article 5, the Commission shall proceed in accordance with Article 6(4). If there has been a change, it shall again initiate the procedure laid down in Article 7; (b) no agreement is reached, the Commission shall take a decision in accordance with the procedure laid down in Article 15, having regard to traditional fair practice and of the actual likelihood of confusion. Should it decide to proceed with registration, the Commission shall carry out publication in accordance with Article 6(4). Under Section 38(2) of the Trade Marks Act 1994, any person may give notice of opposition to a trademark within three months of the date on which an application is published, which notice must include a statement of the grounds for opposition. The applicant may make a counter-statement. The opponent must file evidence, after which the applicant may file evidence, following which reply evidence may be filed by the opponent; after this, additional evidence can only be filed at the discretion of the Registrar. The Registrar then comes to a decision, either on the evidence filed or at a hearing, which decision may be appealed. There is no formal procedure for wines and spirits. Geographical indications are agreed through European Commission, European Council and WTO procedures when opportunities are provided for new indications to be challenged.

See answer to the immediately preceding question.

[Answer 25: PGI/PDO: Article 7 of EC Regulation No. 2081/92 provides for opposition: 1. Within six months of the date of publication in the Official Journal of the European Communities referred to in Article 6(2), any member State may object to the registration. 2. The competent authorities of the member States shall ensure that all persons who can demonstrate a legitimate economic interest are authorized to consult the application. In addition and in accordance with the existing situation in the member States, the member States may provide access to other parties with a legitimate interest. 3. Any legitimately concerned natural or legal person may object to the proposed registration by sending a duly substantiated statement to the competent authority of the member State in which he resides or is established. The competent authority shall take the necessary measures to consider these comments or objection within the deadlines laid down. 4. A statement of objection shall be admissible only if it: - either shows non-compliance with the conditions referred to in Article 2; - or shows that the proposed registration of a name would jeopardize the existence of an entirely or partly identical name or trademark or the existence of products which are legally on the market at the time of publication of this Regulation in the Official Journal of the European Communities; - or indicates the features which demonstrate that the name whose registration is applied for is generic in nature. 5. Where an objection is admissible within the meaning of paragraph 4, the Commission shall ask the member States concerned to seek agreement among themselves in accordance with their internal procedures within three months. If: (a) agreement is reached, the member States in question shall communicate to the Commission all the factors which made agreement possible together with the applicant's opinion and that of the objector. Where there has been no change to the information received under Article 5, the Commission shall proceed in accordance with Article 6(4). If there has been a change, it shall again initiate the procedure laid down in Article 7; (b) no agreement is reached, the Commission shall take a decision in accordance with the procedure laid down in Article 15, having regard to traditional fair practice and of the actual likelihood of confusion. Should it decide to proceed with registration, the Commission shall carry out publication in accordance with Article 6(4). Under Section 38(2) of the Trade Marks Act 1994, any person may give notice of opposition to a trademark within three months of the date on which an application is published, which notice must include a statement of the grounds for opposition. The applicant may make a counter-statement. The opponent must file evidence, after which the applicant may file evidence, following which reply evidence may be filed by the opponent; after this, additional evidence can only be filed at the discretion of the Registrar. The Registrar then comes to a decision, either on the evidence filed or at a hearing, which decision may be appealed. There is no formal procedure for wines and spirits. Geographical indications are agreed through European Commission, European Council and WTO procedures when opportunities are provided for new indications to be challenged.]

The United Kingdom recognizes PGIs and PDOs from other EU member States. Provision for the recognition of PGIs and PDOs from third countries is set out in Article 12 of Council Regulation No. 2081/92. Discussions on this provision by the appropriate Regulatory Committee have still to take place. The procedure for registering trademarks is the same as that set out above. For wines and spirits, such procedures are laid down at European Community level and enforced in the United Kingdom legislation.

There is no prescribed time-limit for PGI/PDO registrations. The right to use the registered name will be withdrawn from any producer no longer conforming to the registered product's specification, but recognition of the PGI/PDO registrations themselves continues. There is also no prescribed time-limit for trademarks, provided renewal fees are paid. Similarly, there are no prescribed time-limits for wines and spirits geographical indications.

Renewal of trade mark registration: £200 (on the 10th anniversary of the filing date and every 10 years after that); fee for each additional class of goods or services: £50; additional fee for late payment: £50.

In general, a trademark may be revoked for non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. There is no requirement of use to maintain PGI/PDO registrations, nor for wines and spirits geographical indications.

See the answer to the immediately preceding question.

[Answer 30: In general, a trademark may be revoked for non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. There is no requirement of use to maintain PGI/PDO registrations, nor for wines and spirits geographical indications.]

Trademarks are not monitored by any one entity, simply by interested parties. All products registered as PGI/PDO are subject to regular inspection to ensure that the requirements of the registered specification are met. There are no criteria for wines and spirits geographical indications.

No entity performs such monitoring other than for wines and spirits. The Wine Standards Board (WSB) monitors labelling at wholesale and import/export level for wines. Local government authorities monitor spirits and the retail sector for wines on behalf of the Government.

A third party may apply for revocation of a trademark on the grounds of non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. The onus is on the party applying for revocation to show non-use. In the case of PGI/PDO registrations, Article 11 of Council Regulation No. 2081/92 lays down procedures whereby member State(s) may submit to the member State concerned that a condition laid down in a PGI/PDO specification has not been met. If the member State(s) fail to reach an agreement on the matter, it is referred to the European Commission for a decision. Not applicable to wines and spirits.

A trademark may be revoked or declared invalid on a number of grounds following an application by any person, i.e. such action is not ex officio. However, a trademark will be removed from the Register if a renewal is not made. PGI/PDO registrations are not forfeited following ex officio procedures. Not applicable to wines and spirits (see answers to questions 28 to 31 above).

[Answer 28: There is no prescribed time-limit for PGI/PDO registrations. The right to use the registered name will be withdrawn from any producer no longer conforming to the registered product's specification, but recognition of the PGI/PDO registrations themselves continues. There is also no prescribed time-limit for trademarks, provided renewal fees are paid. Similarly, there are no prescribed time-limits for wines and spirits geographical indications.]

[Answer 29: Renewal of trade mark registration: £200 (on the 10th anniversary of the filing date and every 10 years after that); fee for each additional class of goods or services: £50; additional fee for late payment: £50.]

[Answer 30: In general, a trademark may be revoked for non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. There is no requirement of use to maintain PGI/PDO registrations, nor for wines and spirits geographical indications.]

[Answer 31: See the answer to the immediately preceding question.]

Only the owner, or those to whom he gives authorization, may use a trademark. Producers who are not part of the original applicant group, but who can show that their product conforms fully with a registered PGI/PDO specification, may use the registered name. Since requests are made ex officio, any product conforming to a geographical indication for wines or spirits may use the name.

The entity that obtained the recognition. Geographical indications for wines and spirits are set up ex officio. Once established they are policed by the Wines Standards Board (WSB) and local government authorities. However, it is open to individuals or trade associations to complain to the Ministry of Agriculture, Fisheries and Food (MAFF) or to take civil action, if they believe a geographical indication is being misused.

The conditions of use, including fees, of a trademark by an authorized user are a matter for that user and the mark owner. There are no fees for wines or spirits.

A passing off action is brought in accordance with the procedures outlined in the United Kingdom's responses to the Checklist of Issues on Enforcement (IP/C/5).15 Infringement proceedings may be undertaken in the civil courts by the proprietor of a trademark. Where EC regulations have been contravened, the competent authorities may prosecute.

A third party may apply for revocation of a trademark on the grounds of non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. The right to continue to use PGI/PDO designations is dependent on the producer continuing to conform to the registered product's specification. There is no condition of use for wine and spirits indications.

Under Section 46(1) of the Trade Marks Act 1994, any person may apply for revocation of a trademark, which notice must include a statement of the grounds for revocation. The proprietor may make a counter-statement and is obliged to file evidence of the use of his trademark on which he intends to rely. The applicant for revocation must file evidence, after which the proprietor may file evidence, following which reply evidence may be filed by the applicant for revocation; after this, additional evidence can only be filed at the discretion of the Registrar. The Registrar then comes to a decision, either on the evidence filed or at a hearing, which decision may be appealed. See the answer to immediately preceding question.

[Answer 40: A third party may apply for revocation of a trademark on the grounds of non-use, if it has not been put to genuine use in the United Kingdom for an uninterrupted period of five years. The right to continue to use PGI/PDO designations is dependent on the producer continuing to conform to the registered product's specification. There is no condition of use for wine and spirits indications.]

Trademarks may be licensed in accordance with Section 28 of the Trade Marks Act 1994. The conditions of such licences are matters for the parties concerned. There is no provision for the licensing of PGI or PDO designations, nor for wines and spirits indications.

EC regulations apply and are enforced through United Kingdom legislation.

Article 14 of EC Regulation No. 2081/92 sets out the relationship between PGI/PDO designations and trade marks: 1. Where a designation of origin or geographical indication is registered in accordance with this Regulation, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same type of product shall be refused, provided that the application for registration of the trademark was submitted after the date of the publication provided for in Article 6(2). Trademarks registered in breach of the fist subparagraph shall be declared invalid. This paragraph shall also apply where the application for registration of a trademark was lodged before the date of publication of the application for registration provided for in Article 6(2), provided that the publication occurred before the trademark was registered. 2. With due regard for Community law, use of a trademark corresponding to one of the situations referred to in Article 13 which was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged may continue notwithstanding the registration of a designation of origin or geographical indication, where there are no grounds for invalidity or revocation of the trademark as provided respectively by Article 3(1)(c) and (g) and Article 12(2)(b) of the First Council Directive No. 89/104/EEC of 21 December 1988 to approximate the laws of the member States relating to trademarks. 3. A designation of origin or geographical indication shall not be registered where, in the light of a trademark's reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. Efforts are made within the United Kingdom Trade Marks Registry to meet these requirements on registration. Not applicable to wines and spirits indications.

See the answer to the immediately preceding question.

[Answer 44: Article 14 of EC Regulation No. 2081/92 sets out the relationship between PGI/PDO designations and trade marks: 1. Where a designation of origin or geographical indication is registered in accordance with this Regulation, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same type of product shall be refused, provided that the application for registration of the trademark was submitted after the date of the publication provided for in Article 6(2). Trademarks registered in breach of the fist subparagraph shall be declared invalid. This paragraph shall also apply where the application for registration of a trademark was lodged before the date of publication of the application for registration provided for in Article 6(2), provided that the publication occurred before the trademark was registered. 2. With due regard for Community law, use of a trademark corresponding to one of the situations referred to in Article 13 which was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged may continue notwithstanding the registration of a designation of origin or geographical indication, where there are no grounds for invalidity or revocation of the trademark as provided respectively by Article 3(1)(c) and (g) and Article 12(2)(b) of the First Council Directive No. 89/104/EEC of 21 December 1988 to approximate the laws of the member States relating to trademarks. 3. A designation of origin or geographical indication shall not be registered where, in the light of a trademark's reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. Efforts are made within the United Kingdom Trade Marks Registry to meet these requirements on registration. Not applicable to wines and spirits indications.]

The normal court and administrative procedures that are available for trademark disputes. See also the answer to question 44 above.

[Answer 44: Article 14 of EC Regulation No. 2081/92 sets out the relationship between PGI/PDO designations and trade marks: 1. Where a designation of origin or geographical indication is registered in accordance with this Regulation, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same type of product shall be refused, provided that the application for registration of the trademark was submitted after the date of the publication provided for in Article 6(2). Trademarks registered in breach of the fist subparagraph shall be declared invalid. This paragraph shall also apply where the application for registration of a trademark was lodged before the date of publication of the application for registration provided for in Article 6(2), provided that the publication occurred before the trademark was registered. 2. With due regard for Community law, use of a trademark corresponding to one of the situations referred to in Article 13 which was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged may continue notwithstanding the registration of a designation of origin or geographical indication, where there are no grounds for invalidity or revocation of the trademark as provided respectively by Article 3(1)(c) and (g) and Article 12(2)(b) of the First Council Directive No. 89/104/EEC of 21 December 1988 to approximate the laws of the member States relating to trademarks. 3. A designation of origin or geographical indication shall not be registered where, in the light of a trademark's reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. Efforts are made within the United Kingdom Trade Marks Registry to meet these requirements on registration. Not applicable to wines and spirits indications.]

Sections 3(3)(b) and 46(1)(d) of the Trade Marks Act 1994 allow for refusal or revocation of a trademark that is liable to deceive or mislead the public. United Kingdom legislation provides for enforcement of the EC regulations covering this point in relation to wines and spirits indications.

A passing off action is brought in accordance with the procedures outlined in the United Kingdom's responses to the Checklist of Issues on Enforcement (IP/C/5).16 A trademark proprietor may bring an action in the civil courts. Local weights and measures authorities enforce the Trade Descriptions Act 1968. Enforcement of the EU legislation on PDOs and PGIs will be the responsibility of Trading Standards Officers. A Statutory Instrument providing for these enforcement powers is being drafted. In the wines and spirits sector, European Community legislation on geographical indications is enforced by the Wine Standards Board (WSB) and local government authorities, who may ultimately pursue cases through the criminal courts. Individuals are also free to pursue cases through the civil courts.

See the answer to the immediately preceding question.

[Answer 47: A passing off action is brought in accordance with the procedures outlined in the United Kingdom's responses to the Checklist of Issues on Enforcement (IP/C/5).16 A trademark proprietor may bring an action in the civil courts. Local weights and measures authorities enforce the Trade Descriptions Act 1968. Enforcement of the EU legislation on PDOs and PGIs will be the responsibility of Trading Standards Officers. A Statutory Instrument providing for these enforcement powers is being drafted. In the wines and spirits sector, European Community legislation on geographical indications is enforced by the Wine Standards Board (WSB) and local government authorities, who may ultimately pursue cases through the criminal courts. Individuals are also free to pursue cases through the civil courts.]

The civil courts (see also answers to previous questions).

No. In the case of PGIs and PDOs, the public is notified of registrations by publication in the Official Journal of the European Communities. Summary sheets for registered PGIs and PDOs are also published on the Internet. There is no onus on member States to publish lists of geographical indications for wines and spirits, but the European Community publishes all approved geographical indications in its Official Journal.

Sections 92, 94, 95 and 99 of the Trade Marks Act 1994 set out certain criminal offences in relation to trademarks. See also answers to questions 47 to 49 above.

[Answer 47: A passing off action is brought in accordance with the procedures outlined in the United Kingdom's responses to the Checklist of Issues on Enforcement (IP/C/5).16 A trademark proprietor may bring an action in the civil courts. Local weights and measures authorities enforce the Trade Descriptions Act 1968. Enforcement of the EU legislation on PDOs and PGIs will be the responsibility of Trading Standards Officers. A Statutory Instrument providing for these enforcement powers is being drafted. In the wines and spirits sector, European Community legislation on geographical indications is enforced by the Wine Standards Board (WSB) and local government authorities, who may ultimately pursue cases through the criminal courts. Individuals are also free to pursue cases through the civil courts.]

[Answer 48: See the answer to the immediately preceding question.]

[Answer 49: The civil courts (see also answers to previous questions).]

No.

None.