Counterfeiting is not only a problem for traditional brands protected by trademarks. Producers of GIs also find their products copied and must fight to maintain their reputation and markets.
Fake products and misleading labelling tend to be a particular problem for the more famous GI producers (e.g. Champagne, Parmigiano Reggiano, Cognac, etc.). However, it is something that can affect all GIs particularly in national markets.
Since EU GIs are mainly used to identify food products, the presence on the market of fake food also poses a possibly serious threat to consumer health.
- Laws for the protection of GIs in the EU
- Regulation (EU) No 1151/2012 (agricultural products and foodstuffs)
Articles 13(3), 36 and 38 provide for ex officio protection of GIs (see below).
According to Article 13 “Protection”, Member States have clear obligation to take the appropriate administrative and judicial measures to prevent or stop the unlawful use of GIs that are produced and marketed within their territory.
To this end Member States shall designate the authorities that are responsible for taking these steps in accordance with procedures determined by each individual Member States.
Article 36 “Designation of competent authority” provides that ““[i]n accordance with Regulation (EC) No 882/2004, Member States shall designate the competent authority or authorities responsible for official controls carried out to verify compliance with the legal requirements related to the quality schemes established in this Regulation.” Official controls cover verification that a product complies with the corresponding product specification, and monitoring of the use of registered names to describe product placed on the market.
Article 37 provides for verification procedures before products bearing Designations of Origin, GIs, and Traditional Specialities Guaranteed are put onto the market.
Article 38 concerns the surveillance of the use of the name in the market place and provides that Member States shall inform the Commission of the names and addresses of the competent authorities in charge of the official controls. Furthermore, Member States shall carry out checks, based on a risk analysis, to ensure compliance with the requirements of the Regulation on quality schemes and, in the event of breaches, shall take all necessary measures.
- Council Regulation (EC) No 882/2004 on official controls performed to ensure the verification of compliance with feed and food law, animal health and animal welfare rules
Articles 54 and 55 of Regulation 882/2004 refer to enforcement actions and state that the measures adopted by Member States must be appropriate and proportionate.
Pursuant to this Regulation, Member States have to set up integrated multi-annual national control plans. Member States have to set up effective, proportionate and dissuasive penalties and sanctions as well as administrative measures (corrective measures, restrictions on feed and food, recall, destruction, closure etc).
- Council Regulation (EC) No 110/2008 (spirits)
Article 22 provides for verification procedures before products bearing GIs or Designations of Origin are put onto the market.
- Council Regulation (EC) No 479/2008 (wine)
This Regulation 479/2008 incorporated EU Regulation 1234/2007 (Single CMO Regulation). Article 118p provides for annual verification of compliance with GI product specifications by relevant bodies (e.g. product certification bodies, public authorities, etc).
Ex officio protection of GIs in the EU and the world
EU Regulation 1151/2012 (Articles 13(3), 36 and 38) confers on EU Member States the responsibility of protecting GIs ex officio. This is protection where the state or public authority is responsible for policing and ensuring GI protection, and may intervene to ensure protection without being asked to do so by the GI holder.
On the other hand, the protection of GIs in other countries is ex parte. Protection is only provided at the request of an interested party. The burden of initiating the protection mechanism is shouldered entirely by the producers or rightholders (consortia etc) who have to go to courts, tribunals, or other administrative venues to claim protection of their GIs.
In most WTO Members where a sui generis legal framework for the protection of GIs has been established, the protection is only ex parte. Few countries outside the EU have ex officio protection and include Switzerland and Croatia (which will become an EU Member State in July 2013).
Some countries have an ex officio protection but with a limited scope, for example Japan offers ex officio protection for liquors, Chile for wines and spirit GIs, as a result of the bilateral agreement signed with the EU. Finally, some countries, such as Algeria, Tunisia and Mauritius, protect ex parte and ex officio. The protection is available at the request of the competent authorities, for example governmental bodies, and GI groups. It is however difficult to know how often and how well the controls are made. Finally China has a legal framework similar to the EU. However, farmers are not keen in participating in the GI scheme because of the controls it implies, even though the GIs are often free of charge.
- Customs law
In 2010, customs authorities in the EU detained over 103 million articles and while the majority were suspended for trademark infringement, 1.45% (over 1 million articles) concerned GIs.
Customs play a key role in the combating of fakes generally, and this includes fake GI products.
- Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs actions against goods suspected of infringing certain IP rights and the measures to be taken against goods found to have infringed such rights – the “EU Customs Regulation” or “Counterfeit Goods Regulation”
The EU Customs Regulation is implemented by Commission Regulation No 1891/2004.
Article 2 of the EU Customs Regulation provides for a definition of ‘counterfeit goods’, which expressly includes goods that infringe designations of origin or GIs.
GI rights-holders can notify customs (nationally or via EU customs notice) of their rights. In the national application form (boxes 8,9, and 12) and the EU application form (boxes 7, 8, and 13), the applicant is requested to provide ‘essential’ data in relation to the authentic goods, specific information concerning the pattern or type of fraud, the name and address of the contact person appointed by the right-holder and any other useful information to distinguish authentic goods from suspect ones.
Article 11 of the Regulation allows EU Member States to provide, in accordance with their national legislation, for a simplified procedure enabling customs authorities to have detained goods destroyed under customs’ control without there being any need to determine whether a GI/IPR has been infringed under national law. In this case the rights holder must inform customs authorities within a certain term (10 working days; 3 working days in the case of perishable goods) that the detained goods infringe its GI/IPR and provide them with a written consent of the declarant or the owner of the goods to abandon the goods for destruction. Such consent shall be presumed to be given when the person in charge has not specifically opposed destruction within the prescribed period. Destruction shall usually be carried out then at the expense and under the responsibility of the rights holder.
Article 16 provides that goods found to infringe GIs may not be:
- brought into the customs territory of the EU;
- withdrawn from the customs territory of the EU;
- released for free circulation;
- place under a suspensive arrangement, in a free zone or free warehouse.
The following 15 EU Member States have adopted national provisions for a simplified procedure in their trademark laws: Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Germany, Hungary, Ireland, Lithuania, Portugal, Romania, Slovakia, Slovenia and Spain.
In the United Kingdom, a similar proceeding is applied by customs, whereas Greece, the Netherlands and Latvia apply Article 11 of the Counterfeit Goods Regulation directly. Countries such as France and Italy, however, have not, up to this point, applied Article 11 directly, nor have they adopted a respective provision into their national laws.
Goods in transit
According to the Counterfeit Goods Regulation, customs authorities of the EU member states are entitled to take action when goods crossing the EU’s external borders are suspected of infringing GIs/IPR, irrespective of whether the consignment is only in transit or in trans-shipment through the EU Customs territory.
Developments: the new EU Counterfeiting Goods Regulation (Draft Regulation 5129/2013/EC)
The adoption of this new Regulation will introduce a number of changes to the current system of customs measures against infringing goods. The new Regulation is subject to a plenary vote by the EU Parliament in April 2013 and should apply in the EU from 1 January 2014. Its main features are that it shall give customs officials at EU borders better tools to confiscate, store and destroy goods infringing IP rights, and it aims to improve the effectiveness of customs controls and set clear rules on detention and destruction procedures.
Important changes relevant to GIs under the new Regulation:
- Destruction of Small Consignments of Goods - The new Regulation establishes a new procedure enabling a rights holder to apply for the destruction of small consignments of allegedly counterfeit or pirated non-perishable goods, without having to undergo formal legal proceedings. This new procedure will permit qualifying consignments of goods to be destroyed by customs, without the specific involvement of the rights holder, if no the importer raises opposition within 10 working days of notification of destruction. If the importer raises an objection to the destruction, the rights holder will have to revert to the traditional course of seeking a determination from the court that the goods are infringing and should be delivered up or destroyed. This procedure only operates in restricted circumstances, namely in relation to small consignments of allegedly counterfeit or pirated non-perishable goods.
- Use of Information - A clarification has been made with regard what information customs authorities may share with one another. Where EU customs authorities detect a consignment of counterfeits in transit, it is authorised to relay that information to the customs authority in the destination country to encourage seizure on arrival. The new Regulation also clarifies that, amongst other things, rights holders may use information concerning the consignor and consignee provided by Customs, not just to initiate civil infringement proceedings or to obtain consent for destruction, but also as a basis for criminal proceedings and to seek compensation.
- Regulation (EC) 178/2002 of the European Parliament and Council of 28 January 2002 laying down the generic principles and requirements of food law, establishing the European Food Authority and laying down procedures in matters of food safety – “EU General Food Law Regulation”
Article 3(5) of the EU Food Law Regulation defines traceability as:
“the ability to trace and follow a food, feed, food producing animal or substance intended to be, or expected to be incorporated into a food or feed, through all stages of production, processing and distribution.”
Article 18 of the Regulation requires all food businesses to:
- identify their suppliers of food, food-producing animals and any other substance intended or expected to be incorporated into food;
- identify the businesses to which they have supplied products; and
- provide this information to the competent authorities on demand.
The requirements apply to any business that trades in food at all stages of the food chain, such as primary producers, manufacturers, wholesalers, retailers, transporters, distributors, those dealing in purchase and sale of bulk commodities, caterers, and food brokers. The traceability provision do not apply outside the EU, so for imported products, they apply only from the level of supply by the EU importer.
Article 18 only requires food business operators to provide the names of businesses who supply them and to whom they supply their products. However, taking into account Recitals 7, 28, and 29 and the notification requirements of Article 19 and 20, traceability records should also include the address of the customer or supplier, nature and quantity of products, and the date of the transaction and delivery.
The traceability EU regulatory framework is also complemented by a number of EU-wide tools and databases. A key tool is the Rapid Alert System for Food and Feed (RASFF) established in 1979: a warning system that supports the traceability system and includes a searchable database of ‘original notifications’ (new cases where health risks have been detected in one or more consignments of a food or feed). RASFF facilitates a rapid exchange of information on new threats to food or feed safety between the RASFF Members, which are the 27 EU Member States, the EU, EFSA, Iceland, Liechtenstein and Norway.
The presence of traceability tools on the products and/or their packaging (e.g. traceability labels, tags, barcodes, etc) can facilitate the identification of fake GI products by customs. Information and records about the origin of the productions also need to be easily accessible to producers and the relevant associations (and their advisors).
Traceability labelling system for Italian PDO wines
The Italian regulations for PDO wines provide that these wines must be traceable; they require that the highest quality PDO wines bear a special traceability label, which is issued upon completion of the certification process carried out by independent certification bodies. This process involves all the operators of the production chain, from the vine-grower to the bottler.
The most important step in the final stage of the certification process is the award of a Compliance Certificate: the wine must undergo chemical-physical and organoleptic analysis carried out by a Tasting Committee to verify the compliance of the wine with the quality standards provided for by the production regulations.
Once the wine has obtained the Compliance Certificate, it is eligible to be bottled as a PDO wine and to bear the special PDO traceability label indicating that the bottled wine has been certified.
The main regulatory framework for the traceability labels system for Italian PDO wines are:
- Legislative Decree No 61/2010 of 8 April 2010 “Protection of designations of origin and GIs for wines”
Article 19 of Legislative Decree No 61/2010 provides that DOCG (Controlled and Guaranteed DO) wines must be marketed in bottles or other containers bearing a special traceability label, also called “State seal” or “State label”. This label must be affixed in such a way as to prevent the wine from being extracted without breaking the label. For DOC (Controlled DO) wines, the traceability label is not compulsory, but some producers request to use it since it denotes quality.
The traceability labels are printed by the Italian Mint, which has created and developed a number of traceability and anti-counterfeiting systems.
- Decrees of the Italian Ministry for Agricultural, Food and Forest Policies of 2 November 2010 and 19 April 2011
Decree of 19 April 2011 established a new type of traceability label for Italian PDO wines.