The Agreement between the European Union and the Swiss Confederation on the protection of designations of origin and geographical indications for agricultural products and foodstuffs, adopted on 13 September and ratified on 20 October last, will enter into force this Thursday 1 December.

  This Agreement amends the Agreement between the European Community and the Swiss Confederation on trade in agricultural products (the so-called “Agricultural Agreement”) by adding an Annex 12 (providing for the mutual recognition of protected designations of origin and geographical indications for agricultural products and foodstuffs) to the Agricultural Agreement.            

• Article 7 of this Annex specifies in detail the extent of protection granted to the GIs listed in Appendix 1 to the GI Agreement (listing the Parties’ GI’s which are protected by the other Party), which appears identical to the protection granted by Article 13 of the PDO/PGI Regulation No. 510/2006.

In particular: “The direct or indirect commercial use of a protected GI is forbidden (Art. 7(2) Annex 12): (a) with regard to a comparable product which does not comply with the specification; and (b) with regard to a non-comparable product if the use thereof exploits the reputation of the GI in question.

The protection in question shall apply in the case of usurpation, imitation or evocation, even if (Art. 7(3) Annex 12): (i) the genuine origin of the product is indicated; (ii) the name in question is used in translation, transliteration or transcription; (iii) the name used is accompanied by terms such as "kind", "type", "style", "imitation", "method" or other similar expressions.

The GIs are also protected, inter alia, against (Art.7(4) Annex 12): (i) any other false or misleading indication as to the genuine origin of the product, its provenance, method of production, nature or essential qualities listed on the packaging, including the inner packaging, the advertising material or documents relating to the product; (ii) any use of a container or packaging liable to convey a false impression as to the origin of the product; (iii) any use of the shape of the product if this is distinctive; (iv) any other practice liable to mislead the public as to the true origin of the product.

The GIs listed in Appendix 1 may not become generic (Art.7(5) Annex 12)”. 

• while Article 9 of the Annex 12 clarifies the relations with trademarks:

Art. 9 (1): “Without prejudice to paragraph 2 of this Article, with regard to the GIs listed in Appendix 1, the registration of a trademark corresponding to one of the situations referred to in Article 7 shall be refused or invalidated, either ex officio or at the request of an interested party, in accordance with each Party's legislation. This general obligation particularly refers to the fact that the request for a registration of a trademark corresponding to the situation provided for in Article 7(2)(a) shall be refused in accordance with each Party's legislation. Trademarks not registered in accordance with these provisions shall be invalid.

Art. 9 (2): “A trademark, the use of which corresponds to one of the situations referred to in Article 7 and which has, in good faith, been filed, registered – or established through use, if this possibility is provided for in legislation – on the territory of the Party concerned, prior to the date of the entry into force of this Annex, may, without prejudice to Article 16(3), continue to be used and renewed notwithstanding the protection provided to the GI through this Annex, provided that no grounds of nullity or expiry, under the legislation of the Parties, can be applied to the said trademark”.

• Article 8 of the Annex provides for transitional periods for the protection of certain GIs. For instance, during a transition period of 5 years, the protection of amongst others the Swiss GIs Sbrinz and Gruyère will not preclude the use thereof in the EU in order to designate and present certain comparable products not originating from Switzerland, while the same 5 year phase is provided for the protection of inter alia the EU GIs Reblochon, Fontina and Feta, during which use of the latter names will still be permitted in Switzerland to designate comparable products not originating from the EU.

With reference to the protection of the Protected Designation of Origin Parmigiano Reggiano and Grana Padano, a transitional period of 6 years from the entry into force of the Annex is provided for, in which products intended for the Swiss market only and in respect of which all measures have been taken to avoid the re-exporting of such products, may be grated, cut and packaged on Swiss territory (obviously without the right to use the EU GI symbols and indications).

The GI Agreement with its Annex 12 can be read here.