A geographical indication protects a product name that is tied to a place of origin and to the qualities or reputation that come with it. Tequila, champagne, parma ham and gouda holland are all protected in this way, and the protection goes well beyond a ban on using the name for an imitation: it also covers evocation, that is, using a name or presentation that brings the protected product to the consumer’s mind even where the true origin is stated.
The case that made this concrete in the Netherlands concerned Desperados, the beer that Heineken flavours with tequila. The Mexican regulatory body for tequila, the Consejo Regulador del Tequila, objected to the word tequila appearing on the bottle. The Amsterdam District Court dismissed the claim, and the reasoning is what makes the case useful.
What the court held
The decisive point was that the product genuinely contained tequila as an ingredient. Where a protected name is used to describe an ingredient that is actually present, and the presentation does not suggest that the product itself is the protected product, the use falls outside what the protection prohibits. The bottle presented Desperados as beer flavoured with tequila, not as tequila.
The court also weighed how the average consumer would understand the label as a whole rather than the word in isolation – which is the standard approach in this field and the reason that packaging design, and not just wording, decides these disputes.
What producers should take from it
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. The presentation must not suggest that the product itself carries the protected designation: prominence, typography, imagery and colour all count. And the rules on the use of protected designations in the name and labelling of compound foodstuffs have their own requirements, which are separate from the question of infringement.
Conversely, producers within a protected designation should note how far the protection reaches. Evocation does not require confusion or bad faith, and it can catch a name that merely alludes to the protected one, which makes the field considerably broader than ordinary trade mark law.
Advice on geographical indications and labelling
Questions in this area are usually asked too late, once packaging has been designed and printed. Reviewing a label against both the geographical indication rules and food information requirements before production is inexpensive; a recall is not. Our intellectual property lawyers advise on labelling, on the use of protected designations and on infringement proceedings. Please contact Law & More.
