National and international protection of GIs
National protection of GIs
Sui generis GI system
“Sui generis” means “of its own kind”. Sui generis GI systems are standalone legal frameworks specifically designed to protect GIs. This implies enacting dedicated GI laws and regulations that establish GIs as distinct and separate intellectual property rights. The main advantage is that the legislation can be tailored to the unique nature of GIs.
Example: Raclette du Valais AOP
Registration
Under a sui generis GI system, the GI typically needs to be registered in a procedure that includes public consultation. It also needs to fulfil certain requirements, such as submitting a comprehensive code of practice outlining product specifications, the delimited geographical area and evidence linking the product’s qualities to its origin. Once registered, GIs cannot become generic. Unlike other intellectual property (IP) rights, there is generally no time limit on their protection and there are generally no fees to be paid.
Scope
Sui generis GI systems offer a broad scope of protection. Imitations or mere evocations that might mislead consumers about the product’s true origin are also considered as infringing a GI right. For example, using terms like “type”, “kind” and “style” next to the protected GI is prohibited.
Enforcement
Enforcement mechanisms under sui generis systems often involve official controls and monitoring, with public authorities empowered to intervene in order to ensure compliance. This is different from enforcement mechanisms under trade mark systems, in which the trade mark owner or its licensee must enforce its rights.
Trade mark system
Example: Fribourg regio garantie is a certification mark that is not a GI but indicates the geographical origin.
Certification marks
Certification marks certify that the products or services possess specific characteristics. The certification mark’s owner, which cannot use the certification mark itself, must ensure that the goods or services using the mark adhere to the rules of use. However, a certification mark may simply identify the production location without necessarily implying that there is a connection between the product’s special quality and its origin.
Example: Wildfang Bodensee is a collective mark that is not a GI but indicates the geographical origin.
Collective marks
Collective marks indicate that the products or services originate from members of a particular group. The emphasis is on the collective nature of the sign, as with GIs. The owner of the collective mark decides who can use it. A collective mark does not necessarily imply that there is a connection between the product’s special quality and its origin.
Disadvantages
Collective marks and certification marks can protect GIs in jurisdictions where sui generis systems are not available. However, they have their limitations:
- A collective or certification mark must be distinctive. This requirement is particularly difficult to meet in the case of GIs given that, by definition, a GI describes the origin of the products.
- Therefore, such a trade mark is generally not the geographical name alone, but a combination of verbal and graphical elements. Terms belonging to the public domain, e. g. geographical names, are usually not individually protected when they are parts of a combined trade mark.
- Unauthorised producers might be able to register a similar or misleading mark, potentially diluting the reputation of the GI.
- The protective power of trade marks is often limited by the need for individual ownership, by use-based requirements, and by weaker oversight of quality.
- The costs are quite high, when considering the fees for renewal and the need to enforce the protection (e. g. opposition to subsequent trade marks applications).
Unfair competition system
Misrepresentation
Unfair competition laws prohibit market practices that mislead the public. This includes misrepresentation of a product’s geographical origin. ‘Passing off’ occurs if one party misrepresents their goods or services as those of another, thus causing damage to the other party’s established reputation. False representation of another party’s products as one’s own is also forbidden.
A supermarket selling cheese labelled ‘Gruyère’, even though the cheese was not produced in La Gruyère.
Burden of proof
Taking action against unfair competition practices is generally more complicated than defending a registered right, as it requires proof of an established reputation and confusion of consumers, damages, etc. Unfair competition laws therefore don’t provide sufficient GI protection on their own. Instead, they serve as a safety net if a denomination is not yet registered or cannot be registered.
Disadvantages
The legislation on unfair competition and consumer protection includes general provisions aimed at protecting consumers and competitors against misrepresentation and free-riding it, but is not specifically designed to protect GIs.
Comparison of sui generis systems and trade mark systems
International protection of GIs
The Paris Convention of 1883, the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891 and the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS of 1994 provide for general protection of GIs in all countries and regions that have signed the agreements. However, it is up to each party’s jurisdiction to decide whether a designation should be considered a GI and be protected as such. Implementation is also left to each party’s legal and administrative system.
For any given GI, international protection can be confirmed through two principal mechanisms: 1) direct registration in a third country; 2) protection through a bilateral agreement or the Lisbon System.
Direct registration in a third country
Most national sui generis registration systems are open to application of foreign GIs. However, this possibility is not extensively used by GIs, because
- it is costly: a local lawyer usually has to be hired, and all documents have to be translated into the official language of the country concerned; and
- the procedure may be long, especially due to the difficulties for a given country’s authorities in assessing the elements of a GI that is located in another country.
Despite these difficulties, as of April 1st, 2025, almost 60 international GIs had been registered in the EU through direct applications (not counting designations registered under a bilateral agreement or those from UK since Brexit). This remains a very limited number given that there are no fees and that applications can be submitted in a number of languages, including English.
GIs can also apply for a trade mark in a third country. But if their designation in their country of origin is a sui generis GI, they cannot use the WIPO Madrid System.
Bilateral agreements on GI protection
Representatives of the Georgian
and Swiss intellectual property
(IP) offices.
Types of international agreements:
Plurilateral agreements have more than two parties. For the ease of reading, they are all designated as bilateral agreements in the text below.
Stand-alone agreements are negotiated between like-minded countries and cover only GIs.
Free trade agreements (FTAs) or partnership agreements cover many issues and may provide GI protection for only one party within a global deal.
Nikoloz Gogilidze, Head of the Georgian IP
office Sakpatenti, and Catherine Chammartin,
Director General of the IPI, at the signing
of the bilateral agreement on the protection
of geographical indications and designations
of origin.
Reasons for bilateral agreements
1. The EU in particular has used bilateral agreements to develop a high level of protection for its GIs outside its territory. After the WTO multilateral negotiations on GIs froze in 2010, the EU increasingly negotiated bilateral agreements on GIs or included GIs in trade negotiations. This was mainly because the TRIPS Agreement offers much less protection than the EU for products other than wines and spirits.
2. Another reason for the increase in bilateral agreements is the stalemate of the WTO’s Doha Development Agenda (2001). This round of negotiations included discussions on extending the strong protection afforded to wines and spirits under TRIPS to other products as well. Since this extension was never agreed upon, many countries have explored alternative solutions to obtain better protection for their GIs in other countries, including bilateral agreements.
For more detailed information on the negotiations on GIs at the WTO, visit:
Challenges of bilateral agreements
Bilateral agreements also present challenges:
1. Unequal bargaining power
This may be the case in particular if the parties have very different levels of development in their GI systems. For example, the EU often holds a stronger bargaining position than its partners, thanks to its robust GI system.
2. Imbalances
There may be an imbalance between the parties, such as a difference in the number of designations to be protected. If the two negotiating countries share the same views on the matter, this is not important. However, if they do not share the same views, only a short list of GIs may be covered.
3. Conflict with existing trade mark rights
GI protection can conflict with pre-existing trade mark rights, leading to legal disputes. It is thus important that bilateral agreements address this issue and set out provisions on coexistence with prior trade marks that might conflict with protected GIs.
4. Enforcement problems
Enforcing GI rights in partner countries can be a significant challenge. It requires resources, expertise, experience and a commitment from the partner country’s government. This can be particularly difficult for countries with limited experience in GI protection and/or a rudimentary enforcement system.
Bilateral v. multilateral agreements
Bilateral agreements can be very efficient, but the protection is per definition only within the territory of the other contracting party. Multilateral agreements, on the other hand, establish a minimum standard of protection across a large number of countries. That is why they are an important way of protecting GIs internationally, in addition to bilateral agreements.
The Lisbon System
Registration processes under the Lisbon Agreement and the Geneva Act
Visit these websites to find out more about the Lisbon Agreement and the Geneva Act: