Trade marks and geographical indications after 1 January 2021
Last updated 26 February 2021
A geographical indication (GI) is an intellectual property (IP) right used on products that have qualities or characteristics attributable to a specific geographical origin. Examples of UK GI products include Scotch whisky and Stilton cheese. The Department for Environment, Food and Rural Affairs (Defra) is the competent authority for GI schemes in the UK. The Intellectual Property Office works closely with Defra due to the interaction between GIs and trade marks.
GI protection in the UK after 1 January 2021
On 1 January 2021, the UK introduced new GI schemes for agri-food products, spirit drinks, wines and aromatised wines.
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.
Guidance is available on the UK GI schemes and how GIs will be protected within the UK.
The guidance below explains how the UK trade marks system interacts with GI protection in the UK after 1 January 2021. Find separate information on the priority between trade marks and GIs for rights filed within 9 months of the transition period in the EU trade mark protection and comparable UK trade marks from 1 January 2021.
The relationship between trade marks and GIs
Prior to 1 January 2021, as part of the trade mark examination process, the IPO would search for GIs registered under the EU schemes and would have refused a trade mark where it conflicted with a protected GI.
From 1 January 2021, the IPO's trade mark examination will 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.
Examination of trade marks where an application conflicts with an existing GI
From 1 January 2021, a trade mark application will be refused where it conflicts with a GI which 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. For example, to exclude trade mark coverage in NI or GB.
This uses the existing provision at section 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. All applicants will be guided through this option by the trade mark examiner handling their application.
Further information is available in the trade mark examination guide that reflect the new practice.
Where a trade mark conflicts with a GI which 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.
Limiting a trade mark specification to overcome an objection
The existing practice will remain where a legitimate GI producer can amend their trade mark specification to ensure compliance with the protected GI. A trade mark 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'.
First published 17 December 2020