The relationship between Geographical Indications and Trademarks: Case Studies

Protection of Geographical Indications: 

The relationship between Geographical 

Indications and Trademarks: Case Studies 

Mr. Paul Bodenham 

Studio Legale Alma

Function of TMs and 

GIs 

• Trademarks distinguish the goods of one 

undertaking from goods of other 

undertakings. 

• It is distinctive and not descriptive. 

• It is the exclusive right of the producer.

Function of TMs and 

GIs 

• Geographical indications (GIs) refer to a 

geographical region, identifying products 

with quality/reputation given by their 

geographical origin. 

• They refer to the collective right of all the 

producers of a given good that are located 

in the geographical area.

Different types of GIs 

• There are several types of GIs,: 

• GIs constituted only by a geographical name (Gruyère 

(CH), Bordeaux (F); 

• GIs constituted only by a non-geographical name 

referring to a geographical origin: Tête-de-Moine (CH),; 

• GIs constituted by a geographical or non-geographical 

name completed by a localizer, in some cases because 

the first has become generic: Camembert de 

Normandie (F), Fourme d’Ambert (F), West Country 

Farmhouse Cheddar (UK), Parmigiano Reggiano;


• GIs constituted by the common name of the good 

and a localizing geographical name: Prosciutto di 

Parma/Parma Ham 

• Regional name for wines, in addition to domain 

or village or sub-regional names: Beaujolais, 

Beaujolais Village (Beaujolais) Moulin-à-Vent. 

• Local toponyms, family names, etc., can also be 

indirect references to a GI (or, at least, a 

geographical area of source).


• Limits of the consumers‟ knowledge related to 

GIs; 

• Industries and retailers also use (and 

sometimes create) trendy GI-like labels. 

• Problems of translation / translitteration 

• Parmigiano Reggiano / Parmesan; 

• Different alphabets and languages: phonetic 

transcription?

Function of Trademarks 

Trademarks distinguish the goods of one producer from 

the goods of other producers 

Trademarks cannot be descriptive 

Difficulty to protect geographical names as trademarks 

on account of the descriptive nature of country/region of 

the goods/services they distinguish 

Geographical names often registered in combination 

with a distinctive sign (logo) 

Problem with the exclusivity right to use the name

Similarities and differences 

between TMs and GIs 

Both GIs and trademarks: 

• are signs that serve the function of denoting the source 

and quality of a product, distinguishing them from 

similar products on the market; 

• are forms of protection that seek to exclude 

unauthorized persons from using the sign and provide 

remedies and sanctions against unauthorized users.; 

• are signs that can become generic through misuse, 

non-use or overuse by the public. 

•



TMs function distinguish a specific product from 

similar products in the market place and indicate 

a product‟s trade origin 

Ordinary trademarks may be transferred and 

owned by several different proprietors without 

external restriction or regulation.



GIs point consumers to the geographical area of 

the product‟s origin and/or specific features of 

the product attributable to the origin. 

Under certain laws, a GI cannot be transferred 

by one proprietor in, for example, the USA to 

another, for example, in Italy as it is not the 

exclusive property of the producer or group of 

producers entitled to its use.



GIs have more in common with collective or 

certification trademarks than with ordinary 

trademarks. 

Some countries (the United States, Canada 

and Australia), offer protection for GIs through 

the trademark system as collective or 

certification marks.

Collective marks 

• Collective marks = signs which distinguish the 

geographical origin, material, mode of manufacture or 

other common characteristics of goods or services of 

different enterprises using the collective mark. 

• The owner of a collective mark may be: 

• an association (of which those enterprises are 

members) 

• any other entity, including for example, a public 

institution or a cooperative


• A collective trade mark or collective mark is 

a trademark owned by an organization (such as an 

association), whose members use them to identify 

themselves with a level of quality or accuracy, geographical 

origin, or other characteristics set by the organization 

• National trade mark laws in some countries (such 

as Finland, Germany, Hungary and Switzerland) provide 

for the filing of the regulations as an additional requirement 

for registration of the collective trade mark


• The owner of a collective mark is responsible for 

ensuring the compliance with certain standards 

(fixed in regulations concerning the use of the 

collective mark) by its members 

• The function of the collective mark is, therefore, to 

inform the public about certain particular features of 

the product for which the collective mark is used. 

• Collective marks are used to promote products 

which are characteristic of a given region

Similarities and differences between 

TMs and GIs 

Similar to GIs, certification marks certify the 

nature or origin of the goods or services to 

which it has been applied 

Certification marks serve to distinguish goods or 

services that are certified by an undertaking (in 

respect of origin, material, mode of manufacture 

or performance of services, quality, accuracy or 

other characteristics) from those that are not 

certified

TMs and GIs: Two complementary 

rights with specific characteristics 

GIs 

• Indicate the geographical 

origin of the goods 

• Guarantee the 

geographical origin 

• Collective approach 

• Producers‟ ownership of 

GI 

• Production necessarily 

linked to a territory 

• Often procedure of 

examination with public 

consultations 

Trademarks 

Distinctive (non-descriptive) 

signs may not guarantee the 

geographical origin 

Individual approach (principle) 

TM proprietor is exclusive 

owner 

May be produced everywhere 

Examination based on 

absolute or relative grounds


• Trade marks which have been registered 

before the registration of a PDO or a PGI 

may continue to be used, but the 

registration of an equivalent trade mark after 

the approval of a PDO or PGI is impossible


• The existence of a trade mark (registered or 

unregistered) may be a reason to refuse the 

registration of a PDO or a PGI [Art. 7(3)(c), 

Regulation (EC) No 510/2006] 

• Hence the Polish geographical designation 

Herbal vodka from the North Podlasie Lowland 

aromatised with an extract of bison grass 

or Wódka ziołowa z Niziny Północnopodlaskiej 

aromatyzowana ekstraktem z trawy żubrowej, 

so to avoid infringing the trade mark Żubrówka

TMs and GIs – Complementary Example of 

Tête de Moine (AOC)


Tête de Moine (AOC) 

• Tête de Moine is a Swiss cheese. Its name, which 

means Monk's Head, is derived from its invention and 

initial production by the monks of the abbey of Bellelay, 

located in the community of Saicourt, district of Moutier, 

in the mountainous zone of the Bernese Jura, the 

French-speaking area of the Canton of Bern 

• The cheese is eaten in an unusual way: it must be 

carefully scraped with a knife in order to develop its 

scented flavors


Tête de Moine (AOC) 

• Tête de Moine is currently produced by fewer than 

10 cheese dairies of the Jura Mountains area of 

Porrentruy, District of Franches-Montagnes, both 

situated in the Canton of Jura, as well as in 

Moutier and Courtelary, in the Bernese Jura. 

• Since May 2001, it has enjoyed an Appellation 

d'origine contrôlée (AOC). 

• Exported throughout the world, it is the name card 

of the cheese-making tradition of Swiss Jura.

TMs and GI s – Complementary Example of 

CHAMPAGNE 

French GI 

Champagne (AOC) 

Several 

Trademarks used 

by the different 

producers

Case Studies: Darjeeling Tea 

Darjeeling tea is a premium quality tea produced in 

the hilly regions of the Darjeeling district West 

Bengal - a state in the eastern province of India. 

Among the teas grown in India, Darjeeling tea offers 

distinctive characteristics of quality and flavor, and 

also a global reputation for more than a century. 

Broadly speaking there are two factors which have 

contributed to such an exceptional and distinctive 

Taste, and namely geographical origin and 

processing. 

„


The Geographical Indications of Goods 

(Registration and Protection) Act, 1999 protect GI‟s 

in India. 

While registration of GIs is not mandatory in India, 

Section 20 (1) of the GI Act states that no person 

shall be entitled to institute any proceeding to 

prevent, or to recover damages for, the infringement 

of an unregistered GI. 

The Indian central government has established the 

Geographical Indications Registry with all-India 

jurisdiction, at Chennai, where right-holders can 

register their GIs


Around 65 GI‟s of Indian origin have already 

been registered with the GI Registry. These 

include GIs such as: 

Darjeeling (tea) 

Pochampalli Ikat (textiles) 

Chanderi (sarees) 

Kancheepuram silk (textiles) 

Kashmir Pashmina (shawls)


An adequate legal protection is necessary for the 

protection of legitimate right holders of Darjeeling 

tea from the dishonest business practices of 

various commercial entities. 

For instance, tea produced in countries like 

Kenya, Sri Lanka or even Nepal has often been 

passed off around the world as „Darjeeling tea‟. 

Appropriate legal protection of this GI can go a 

long way in preventing such misuse.


The first attempt on the part of the Tea Board 

of India towards protection of the 

DARJEELING brand was undertaken way 

back in 1983, when the DARJEELING logo 

was created 

In the absence of a separate law dedicated 

exclusively to GIs in India during that time, the 

word DARJEELING was also registered under 

the Trade and Merchandise Marks Act 1958 in 

class 30 in the name of Tea Board in 1998


When the Geographical Indication Act in 

India was enacted in September 2003, the 

Tea Board applied for GI protection of 

DARJEELING in October 2003. 

In October 2004, Darjeeling was granted the 

GI status in India to become the first 

application to be registered in India as a GI.


The tea board tried to prevent unauthorized use or 

attempt or actual registration of Darjeeling word/ 

logo brought to its notice. [ 

For example Bulgari, Switzerland agreed to 

withdraw the legend Darjeeling Tea fragrance for 

men pursuant to legal notice and negotiations by the 

Tea Board. 

The Tea Board has fought almost 15 cases in the 

last four years against infringement and misuse of 

the word Darjeeling Tea worldwide which includes 

Russia, USA, Japan, France, Germany, Norway and 

Sri Lanka.


While the Tea Board has made strides in its 

quest for international recognition of Darjeeling 

tea as a trademark, recognition of Darjeeling 

Tea as a Geographical Indicator in the 

international arena is still to be achieved 

Article23 of TRIPS gives good protection to 

Wines and Spirits, but currently not for other 

products


The Tea Board has stated that a lack of a 

multilateral system of notification and 

registration for products like Darjeeling Tea - 

which is instead available for wines and 

spirits - is jeopardizing the international 

protection of thereof and that it would be 

important to seek extension of GI protection 

to other products by amending Article 23 of 

the TRIPS

GIs and TMs: The Swiss Legislative 

Framework 

• On July 1, 1997, the ordinance on the protection 

of appellations of origin and geographical 

indications for agricultural products and 

processed agricultural products of 28th May 1997 

(Ordinance on PDOs and PGIs) came into force, 

establishing a register for protected designations 

of origin (PDOs/AOC) and protected 

geographical indications (PGIs/IGP) for 

agricultural and processed agricultural products 

except wines.

GIs and TMs: The Swiss Legislative 

Framework 

• The commercial use of PDOs and PGIs is 

prohibited for all comparable products which 

do not meet the specifications as well as 

any other non-comparable product if it 

exploits the reputation of the protected 

indication.

Gis and TMs: The Swiss Legislative 

• Examples: 

Framework 

• Swiss trademark Sbrinz (N° 501 173) 

could be registered for dairy products only 

with a limitation of the product list: dairy 

products, namely cheese complying with 

the prescriptions of the PDO Sbrinz;

Gis and TMs: The Swiss Legislative 

Framework 

• The use of the name GRUYENTAL for 

cheese from Argentina is not authorized as 

this could be confused with the PDO 

Gruyère 

• The use of the traditional name Goron for 

wine from the Canton of Vaud is illegal. The 

name GORON is a geographical indication 

that can be used only in the Canton of 

Valais (Federal Court decision published in 

ATF 124 II 398)

Consorzio del Prosciutto di Parma / 

Maple Leaf Meats, Inc. 

• In 1963 23 producers of Prosciutto di 

Parma (Parma Ham) from the town of 

Parma entered into a voluntary 

Consortium for safeguarding the genuine 

Parma Ham product, which is an air-cured 

ham produced in the vicinity of the town of 

Parma



• The Consorzio's main aim was to protect not 

only their product mark which was known as 

Ducal Crown Mark, but also to provide 

protection to the producers, stockbreeders & 

traders who were involved in processing the 

ham product against the fraudulent use and 

misappropriation thereof 

• In 1996 Parma Ham was registered as 

Protected Denomination of Origin (PDO) on 

June 12, 1996



• In 1997 Consorzio Prosciutto di Parma 

commenced proceedings before the Canadian 

Federal Court against Maple Leaf Meats so 

that the PARMA Canadian trademark 

registered by the latter be expunged on 

account of such mark being deceptively mis- 

descriptive (article 22 TRIPS requires the 

public to be misled as to geographical origin of 

the good) or lacking distinctiveness 

• The Judge of first instance dismissed the 

Consorzio‟s application on both counts



• The Judge of first instance held that - on the 

basis of survey evidence demonstrating that 

68% of Canadians associated nothing with 

the term PARMA - the ordinary Canadian 

consumer would not have associated in 

1971 (when the application for registration 

of PARMA was filed) the name PARMA with 

hams from a particular Italian region



• The Judge also held that the mark 

PARMA lacked distinctiveness since the 

consumers to whom the Consorzio refer 

were held not to be representative of the 

Canadian market



• It can be argued that the proper test 

should have been whether an average 

Canadian consumer with particular 

knowledge of the foodstuff in question 

would consider such foodstuff as 

originating from the town of Parma



• Article 24(5) TRIPS also provides that: 

• Where a trademark has been applied for or 

registered in good faith, or where rights to a 

trademark have been acquired through use 

in good faith either: 

• (a) before the date of application of these 

provisions in that Member as defined in 

Part VI; or 

.



• (b) before the geographical indication is 

protected in its country of origin; 

• measures adopted to implement this Section 

shall not prejudice eligibility for or the validity 

of the registration of a trademark, or the right 

to use a trademark, on the basis that such a 

trademark is identical with, or similar to, a 

geographical indication.



• On this basis, the Consorzio could still not 

rely on any possible recourse to 

international obligations under TRIPS 

• The Consorzio was, in fact, only formed in 

1963, whereas the PARMA trademark had 

been used since at least 1963



• Consorzio del Prosciutto di Parma filed a 

complaint under Article4 of Trade Barrier 

Regulation in order to submit certain 

allegations about how export sales of 

Prosciutto di Parma to Canada had been 

adversely affected 32



• The Consorzio stated that the Canada had 

kept the restrictions for exporting the ham 

product to their country because it could not 

register the Prosciutto di Parma as a 

Collective Trademark or a Certification 

Mark. 

• The Ducal Crown mark had been registered 

as a Collective Mark not only in Italy but 

also in the United Kingdom, Belgium and 

the United States of America.

Sandwich and Champagne 

• The case concerns the conflict between the 

trademarks SANDWICHS ET CHAMPAGNE 

with the PDO CHAMPAGNE 

• The action was commenced by Comité 

Interprofessionel du Vin de Champagne 

(CIVC) dated May 9, 2001


• CIVC stated that: 

• The contested trademark was null and void 

on the basis of French Law 

• The contested trademark was an unlawful 

appropriation as well as a weakening of the 

reputation of the “Champagne” P.D.O


The Court held that CHAMPAGNE has been a 

protected denomination since December 17 

1908, by virtue of a Decree which reserves the 

use thereof exclusively on wines produced 

exclusively in Marne and Aisne 

As a result thereof, the Court held that: 

- the term CHAMPAGNE is a protected 

denomination;


- the term CHAMPAGNE was the part of the 

contested trademark that had the greatest 

distinctive capacity; 

- in the case at hand, the use of the term 

CHAMPAGNE was likely to weaken the 

notoriety of the protected denomination 

pursuant to article L. 115-5 of the Consumer 

Code; 

- the contested trademark had to be declared 

null and void


The contested trademark 

SANDWICHS ET CHAMPAGNE (n. 

3.035.945 filed on June 14, 2000) 

was declared null and void on 

November 19, 2002 by the Cour de 

Grande Instance di Parigi

Duque de Villena 

• The Spanish company René Barbier, S.A 

filed on June 21, 1999 a Community 

application for registration for the trademark 

DUQUE DE VILLENA in class 33 (wines) 

The examiner held with a decision dated 

October 13, 2000 that: 

• the application was to be rejected on 

absolute grounds pursuant to article 7 

paragraph 1 letter j) of the Community 

Trademark Regulation

Duque de Villena 

The company appealed to the OHIM Appeals Board 

The Appeals Board held that: 

VILLENA was an Protected Denomination of Origin 

identifying wines coming from Villena in Spain 

The contested trademark infringed the VILLENA 

geographical indication since the products 

distinguished by the said trademark did not come 

from the Villena area

Parmigiamo / Parmetta 

On 8 June 2010, the Cologne Court upheld the 

preliminary injunction granted inaudita altera 

parte on 26 January 2010 against the German 

Fuchs Gewürze Group, preventing the latter from 

marketing seasonings and cheese mixes under the 

name PARMETTA.

Scotchijto 

Registration of the Community trademark 

no. 2538627 SCOTCHIJTO in classes 16, 

25, 28 e 33 (alcoholic drinks excluding 

beer) 

The Scotch Whisky Association appealed 

to OHIM requesting that the trademark in 

question be declared null and void for 

having infringed article 7(1), letters j), g) 

and c)

Scotchijto 

Ist claim of nullity (Breach of article 7 (1) letter 

j) of the Community Trademark Regulation): 

• the contested trademark contained a 

geographical indication (SCOTCH) used in 

order to identify wines coming from a given 

region (SCOTLAND) when the contested 

wines did not come from such region.

Scotchijto 

2nd claim of nullity (Breach of article 7 (1) 

letter g) of Community Trademark Regulation): 

Consumers could be misled into believing that 

every product bearing the SCOTCHIJTO 

trademark was a Scotch Whisky 

• The contested trademark was null and void 

on account of being deceptive, insofar as it 

was likely to mislead the public on the 

geographic origin of the Products

Scotchijto 

3 rd claim of nullity (Breach of article 7 (1) 

letter c) RMC): 

The trademark was composed exclusively 

of a sign that in commerce was used to 

designate the origin of a product (SCOTCH)

OHIM Decision: 

Scotchijto 

• The registration of the Community mark 

no. 2538627 SCOTCHJITO was declared 

null and void with reference to class 33 for 

alcoholic beverages (excluding beer) not 

coming from Scotland

Whisky Blended 

The Italian company AGIRA s.r.l bottled and 

commercialized a product called WHISKY 

BLENDED 

• The contested product was found not to 

comply with the production regulations for 

Scotch Whisky 

• The label omitted to state what was the place 

of origin, but showed the likeness of a golf 

player wearing Scottish attire

Whisky Blended 

The Court of Naples held that the depiction of a 

typically Scottish landscape (with a golf player 

wearing Scottish attire) led the average 

consumer to think of Scotland 

• In Scottish tradition the term Whisky Blended is 

used exclusively for blends of various 

distillations, with the result that Whisky blended 

should be used exclusively with reference to the 

well-known Scottish alcoholic beverage 

The Court held, therefore, the use of WHISKY 

BLENDED to be misleading

Parmigiano Reggiano / Parmesan 

True Parmesan cheese comes from Italy. The 

five regions around Parma, in northern Italy, to 

be exact. It is made only from raw milk 

(with no additives) and is aged at least one 

year.

Parmigiano Regiano / Parmesan 

In Commission v. Germany, C-132/05, the 

European Court of Justice held that Parmesan 

cheese was deemed to be an imitation. 

In so ruling, the court rejected Germany‟s 

argument that the name was generic for a type 

of hard, crumbly cheese that is often grated 

over food.


ECJ stated that: It is legitimate to infer from 

this that consumers in that Member State 

perceive ‘Parmesan’ cheese as a cheese 

associated with Italy, even if in reality it was 

produced in another Member State


The Federal Republic of Germany was 

also unable to provide information on the 

quantity of cheese produced in Italy under 

the PDO PARMIGIANO REGGIANO into 

Germany, making it impossible for the 

Court to use the factors relating to the 

consumption of that cheese as indicators 

of the generic character of the name 

PARMESAN


Given that the Federal Republic of 

Germany failed to show that the name 

PARMESAN had become generic, use of 

the word PARMESAN for cheese not 

complying with the specification for the 

PDO PARMIGIANO REGGIANO was to 

be regarded as infringing the protection 

provided for that PDO under Article 

13(1)(b) of Regulation No 2081/92

Thanks for the attention! 

Mr. Paul Bodenham 

pb@avvbodenham.it

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