A geographical indication protects a product name tied to a place of origin, together with the qualities or reputation that come with it. The protection goes beyond banning outright imitations: it can also stop a name or presentation that brings the protected product to a consumer’s mind, even where the true origin is stated on the label. A 2019 ruling of the Amsterdam District Court, in a dispute over Heineken’s Desperados beer, shows how far that protection reaches – and where it stops.
What is a geographical indication, and what does it protect against?
Names such as tequila, champagne, parma ham and gouda holland are geographical indications: the name is reserved for products from a defined place that meet defined production rules. Protection is not limited to counterfeits sold under the protected name. It can also cover a reference that merely alludes to the protected product, a concept generally described as evocation.
What happened in the Desperados case?
Desperados is a beer that Heineken flavours with tequila. The Consejo Regulador del Tequila, the Mexican body that regulates the tequila designation, objected to the word “tequila” on the bottle and asked the Amsterdam District Court to order its removal. On 15 May 2019, the court dismissed the claim (ECLI:NL:RBAMS:2019:3564).
Why did the court rule in Heineken’s favour?
The decisive point was that Desperados genuinely contained tequila. The back label described the product as “beer flavoured with tequila”, and the ingredients list named “aroma (75% tequila)”. The court held that a reasonably observant and circumspect average consumer would understand, from the label as a whole, that tequila was used as a flavouring in a beer rather than being sold as tequila itself.
The Consejo Regulador del Tequila appealed to the Amsterdam Court of Appeal. The parties reached a confidential settlement in July 2021, so the appeal did not lead to a further ruling on the merits.
What should producers take from this?
Using a protected name as an ingredient reference is possible, within limits. The ingredient must genuinely be present, in a quantity that makes the reference honest, and the labelling and ingredients list should state this clearly. The presentation as a whole – prominence, typography, imagery and colour – must not suggest that the product itself is the protected product.
Producers within a protected designation should note how broad the protection can be. Evocation does not require confusion or bad faith on the other side, and it can catch a name that only alludes to the protected one. That makes this field considerably wider than ordinary trade mark law.
How do we advise on this?
Questions about geographical indications are usually raised too late, once packaging has already been designed and printed. Checking a label against the geographical indication rules and the food information rules before production starts is far cheaper than a recall afterwards. Our intellectual property lawyers advise on labelling, on the use of protected designations, and on infringement proceedings.
In summary
- A geographical indication protects more than the name itself: it can also cover presentations that merely evoke the protected product.
- In the Desperados case, the Amsterdam District Court dismissed the claim because tequila was genuinely present and clearly described as a flavouring, not as the product itself (ECLI:NL:RBAMS:2019:3564, 15 May 2019).
- The Consejo Regulador del Tequila’s appeal against that ruling ended in a confidential settlement in 2021, so the case was never decided on appeal.
- Naming a protected product as an ingredient is possible only if it is genuinely present and the presentation does not suggest the product itself carries the protected designation.
- Checking labelling before production starts is far cheaper than dealing with a dispute, or a recall, afterwards.
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