What is a geographical indication (GI)?
A GI can be protected as a certification trade mark. A GI registered as a CTM indicates to consumers a product comes from a specific geographical region – and therefore has a distinctive set of qualities or reputation attributable to that region.
GI rules may include:
- How a product is made
- What ingredients are used
- The environmental or agricultural features of the region which give the product distinctive qualities
- A strong reputation in the region for producing a particular product of a certain quality.
Examples of geographical indications
The owner of the GI is responsible for ensuring the GI is only used by producers who follow its rules.
Benefits of a GI
A standard trade mark helps consumers distinguish your products or services in the market (e.g. your brand). A GI indicates the product comes from a specific region and therefore has certain qualities.
Once well recognised, a GI can create expectations over and above your brand that can attract a premium price.
This means a GI can be a powerful marketing tool, and one that grows in value as consumer recognition increases.
It also provides ongoing protection to all whose goods are covered by the GI, because it prevents other traders with inferior quality from using it, potentially undermining the valuable reputation of a region.
How long does a GI last?
GIs registered as a CTM last for ten years from the filing date and may be renewed towards the end of that period.
If it's not renewed, registration will lapse and protection will cease.
Is my region eligible for a GI?
To be eligible for registration as a GI, the location must have a reputation for special characteristics attributed to the area that affect goods produced there, implying distinctiveness.
Not all locations imply special characteristics.
A strawberry grower in Brisbane may wish to promote his fruit as Brisbane strawberries. Even if these strawberries are grown in Brisbane, this alone does not make ‘Brisbane’ a GI.
The strawberries would also need to have some special characteristics or a certain reputation (such as sweeter, or larger, or fewer seeds) that's attributable to the climate, soils or production techniques of the Brisbane area.
It's this link between the special characteristics of the strawberries and the geography or reputation of the region that creates a GI.
How do I apply for a GI?
Applying for a geographical indication can be a complex process. So if you're seeking protection of GI, we recommend getting advice from a registered trade mark attorney.
As part of your GI application, you'll need to:
Each GI application must be accompanied by a set of rules. You must decide the precise geographical location that your GI covers as well as any requirements for production or quality standards that goods must meet to qualify for use of your GI.
Specifically, your set of rules must cover:
- The certification requirements that goods must meet to qualify for the GI
- The requirements that an owner or approved user of the certification trade mark must meet to use the certification trade mark
- A process for determining whether goods meet the certification requirements
- Attributes that someone must have to be approved to assess whether goods meet the certification requirements
- Other requirements about the use of the GI by the owner or approved user
- A procedure for resolving a dispute about whether goods meet the certification requirements
- General procedures for resolving any disputes.
While any legal entity can apply for and own a GI, you should give some thought to who would be best placed to own it, given the need to promote, control and enforce the right over its lifetime.
The GI owner can be:
- A group of producers within a region who form an incorporated association
- A central organisation
- A local or state authority.
How to manage a GI
A GI only develops and maintains value if it is managed well over its lifetime.
GI owners need to:
- Market the GI to raise its reputation
- Raise awareness among consumers as to why the GI goods are better than similar goods from elsewhere
- Oversee use of the GI to ensure approved traders continue to comply with the rules
- Monitor any unauthorised use of the GI for infringement
- Have access to civil remedies against infringements including injunctions and damages.
An IP specialist, such as a trade mark attorney, can advise you of your enforcement options.
In Australia, a GI registered as a CTM can be cancelled if, over time, it becomes:
- Not capable of distinguishing
- Confusingly similar to an earlier trade mark or GI
- Likely to deceive or cause confusion.
A GI registered as a CTM could also be cancelled on the basis that it's become known as the generally accepted description or name of the relevant good or has become generic.