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All crystal clear between the names on your product label: how do protected geographical indications relate to trademarks and trade names?

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11/07/2019

‘Brussels Witloof ’, ‘Jambon d’Ardenne’, ‘Geraardbergse mattentaarten’, and ‘Vlaams-Brabantse tafeldruif ’. Proudly telling consumers where your product originates from using a protected designation of origin (PDO) or a protected geographical indication (PGI) will give it extrapanache, even though the PDOs/PGIs as a product name are often in conflict with other indications that appear on the label of a product, such as trademarks and trade names. Several regulations related to PDOs/PGIs have established a harmonised sui generis protection regime specifically designed to protect producers and to guarantee fair competition in relation to the qualities and characteristics of a given product.

The differences with the other intellectual property rights are numerous, one of the most important being the essential function that the various intellectual property rights perform. Where registered trademarks are primarily concerned with identifying the link with a particular company (or a group of companies), it is the function of a PDO/PGI to create a link with a geographical origin and the characteristics attributable to that origin. Not always are the same persons entitled to act on the basis of the different intellectual property rights and the scope of protection may also vary, with the scope of protection appearing to increase in proportion to the efforts required to obtain the protection.

As a measure to steer clear of the other rights, it was made possible to undertake action on the basis of a PDO/PGI against infringing names, which also constitute, for example, trademarks or trade names. The jurisprudence is elaborate and the article discusses a number of high-profile judgments in more detail. Certain priority rules have also been provided for in (European) legislation. For example, a PDO/PGI may, in principle, prevent the subsequent registration of that name as a trademark if certain conditions are cumulatively met. If a name is already registered as a trademark, and such name is later applied for as a PDO/PGI, then both shall, in principle, be used in parallel.

In conclusion, it requires more effort to obtain a PDO/PGI, but once registered, it provides an extensive scope of protection that reaches further than the scope of protections provided for under trademark law and the protection provided by a trade name. An older PDO/PGI also seems to have more weight than an older trademark when it comes to the priority rules for registration. After all, an older trademark can coexist with a later PDO/PGI, whereas an older PDO/PGI will be able to prevent a later trademark registration more easily.

For more information, please do not hesitate to contact Sarah van den Brande or Dorien Taeymans directly.