The first successful application under the UK Geographical Indication (GI) scheme has recently been granted to Welsh Whisky. Protection for this product has been brought about by the surge in its popularity and the expansion of the industry in recent years.
This news brings attention to the new procedures for gaining geographical protection for UK-based goods since the UK’s departure from the EU and reminds us to be aware of how to gain such protection going forward in both the UK and the EU.
GI protection since BREXIT
In 2021, following its departure from the EU, the UK government introduced the UK GI scheme to continue a protection scheme for goods that are linked to a particular location. The scheme predominantly aims to protect food and beverages, as these goods can be commonly made in, or in a way that suggests a link to, a specific place.
Historically, protection for GIs was granted by the EU, and this continues to apply in current Member States. The way in which GI protection is broken down into different categories in the EU has been applied in the UK, with the main categories being:
- Protected designation of origin (POD)
- Protected geographical indication (PGI)
- Protected spirit drinks (GI)
- Traditional specialty guaranteed
It is possible to access the various lists of registered terms under the UK GI scheme here.
It is important to note that the UK GI scheme will only protect goods that are produced and sold in the UK. If you are a producer in the UK and you require protection in the EU, you must make an application and secure protection under the UK GI scheme before applying to the EU GI scheme.
Since the UK is no longer part of the EU, protection for a GI in the UK is for a reduced territorial scope and therefore, in theory, it should be easier for local (UK) products to show characteristics, as well as the need for sales, being limited to the UK. Thus, it is likely that we will see more applications for UK GIs going forward.
The latest update introduces new protection for a UK spirit – Welsh Whisky.
While the origins of Welsh Whisky can be traced back to the Middle Ages, Welsh Whisky hasn’t had a large presence in the Whisky market. It wasn’t until the late 1990s that Welsh Whisky was brought back onto the scene by a group of friends that opened a still in Penderyn. The first bottle of Welsh Whisky was then produced on St David’s Day in 2004.
As with most Whiskies, the Welsh Whisky is made using malted barley and water originating from Wales – hence the UK protection is given for Single Malt Welsh Whisky and the protection has been granted to four distilleries (Penderyn, In the Welsh Wind, Da Mhile, and Coles).
Trademark law protection
Aside from the UK GI scheme, the Trade Marks Act 1994 protects geographical names in the UK by preventing trademark applicants from having a monopoly over words or terms that could indicate origin.
A trademark may not be descriptive (as per s.3(1)(c) Trade Marks Act 1994), which prohibits a mark being registered if it 'consists of signs or indications which may serve, in trade to designate […] geographical origin', whereby the average consumer would perceive the goods/services to have originated from a particular source (as per Windsurfing Chiemsee, Joined Cases C-108/97 and C-109/97).
Moreover, alternative protection is available under the Act to prevent a trademark from being registered should it be 'of a nature as to deceive the public […] as to the geographical origin of the goods or services' (as per s.3(3)(b) Trade Marks Act 1994).
Passing off protection
The common law in the UK also protects geographical indications in an extension of the tort of passing off.
The first requirement of passing off is that goodwill must exist, i.e., the attractive force that brings in custom (as per IRC v Muller & Co’s Margarine Ltd  AC 217), which typically is assessed based on the claimant being a single seller/trader.
However, this can now be extended to a group of traders who ‘share’ the goodwill in a particular product. This was first recognised in relation to Champagne (Bollinger v Costa Brava Wine Co.  1 WLR 277) and has since been extended to other products such as Greek yogurt (Fage UK v Chobani UK  EWCA Civ 5). This is important to be aware of as passing off is an unregistered right, so there is no register to check and shared goodwill in a trademark may not be appreciated. This could lead to an overlap with registered rights, if the group of traders seek protection under the UK GI scheme for their shared product.
We recommend UK and EU food and drinks brand owners consider both trademark registration and GI schemes to protect products that are linked to a geographical location.
Furthermore, you should ensure your brands and marketing don’t infringe on existing protected GIs. To rule out any potential issues and avoid incurring unnecessary costs, work with a trademark attorney and consider undertaking clearance searching early in the brand development process.
To find out more about GI and trademark protection, please speak to your Novagraaf attorney or contact us.
Megan Taylor is a Trainee Trademark Attorney at Novagraaf in the UK.