In the EU, such products can be protected in several ways. For example, we know the protected designations of origin (PDO), protected geographical indications (PGI) and traditional specialties guaranteed (TSG). The PDO is used for product names that are most closely associated with the place where they were produced, such as Noord-Hollandse Edammer cheese. The PGI expresses the link between a geographical area and the name of the product, which stands for a certain quality or reputation. This also applies to the quality of Gouda Holland cheese. Lastly, TSG emphasises the traditional aspects, without linking to a specific geographical area. In the Netherlands, for example, we like to enjoy a bit of Hollandse Nieuwe (new-season salted herring), provided it meets the requirements.
What happens if trademark law and geographical indications overlap? There are instances of trademark applications in which a protected indication is mentioned or the logo is used. Last year, among other things, there was a case about a Spanish bar called Champanillo and also a logo with a large image of the PGI incorporated in it.
You can’t deny the fact that champagne stands for a certain quality. In the past, trademark holders were tempted to use it, much to the dismay of the Comité Interprofessionel du Vin de Champagne (CIVC). Unilever came up with Champagne Andrélon and Aldi with Champagne Sorbet Ice Cream.
And last year, an entrepreneur decided to incorporate the Champagne PDO in a trade name. A Spanish entrepreneur operated several tapas bars in Spain with the Champanillo name and logo to match:
The CIVC objects to the Spanish court, which then asks the Court of Justice of the European Union for an explanation. We know, of course, that the PDO for Champagne may not be used for similar products, but the question was whether this also applies to services. In this case, the service was the operation of a tapas bar.
Ultimately, the European Court ruled that the PDO also offers protection when using services. Champagne was therefore able to successfully object to the Champanillo tapas bar.
Styria in Austria is a region known for its wine. Another regional product and a protected geographical indication is Styrian pumpkin seed oil. The Schmid family produces this pumpkin seed oil and applied for an EU trademark:
The Landeskammer für Land- und Fostwirtschaft in Steiermark objected, because they believe that a symbol such as the PGI is a sign of public interest and should not simply be registered as a trademark. After all, this way, consumers would get the idea that there is a connection between the symbol and the quality label. The fact that Styrian pumpkin seed oil actually meets the requirements of the PGI does not alter this. The court finds it undesirable if a trademark owner registers a PGI symbol as a trademark, since a trademark confers a monopoly.
If the requirements of a geographical indication are met, it is not necessary and in some cases not even permitted to incorporate the symbol in a trademark registration. In addition, it is also wise to check which geographical indications exist to prevent illegal use of a corresponding geographical indication. The European trademark authorities recently launched a handy tool in addition to the standard registers where the existence of geographical indications can be easily verified.
The geographical indication has continued to develop, which certainly benefits transparency with regard to trademark law. For advice and information about your options, feel free to get in touch with NLO Shieldmark via email@example.com.
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