In the second part of 2023, other positive decisions for GIs concerning recognition and enforcement have been issued in several jurisdictions around the world. Some examples:
Gorgonzola recognized in Chile
In August, the Chilean Trademark Office (INAPI) registered “Gorgonzola” as an appellation of origin, rejecting the opposition by the US Dairy Export Council (USDEC) based on the alleged genericity of the term Gorgonzola in Chile. The case, which had started in 2018, is relevant for GIs as INAPI – in its evaluation – confirmed some crucial principles of the international intellectual property system: On the one hand, genericity must be evaluated on a strictly territorial basis. On the other, the threshold to assess genericity is high and it must be substantiated: a limited import of a product labeled as the GI (but not respecting its product specification) and/or the corresponding name use in certain restaurants’ menu in the country, are not enough to consider it generic. For more information read the INAPI press release.
The protection Romanée-Conti in Indonesia
Last August, following the “Institut National de l’Origine et de la Qualité” (INAO) opposition, the Directorate General of Intellectual Property of Indonesia (DGIP) refused the registration of two trademarks “Conti” (word and figurative), which had been requested by an Indonesian company in class 33 (wine). The DGIP accepted the INAO arguments considering the trademarks at issue confusingly similar to the French and European designation “Domaine de la Romanée-Conti”. Please find here an interesting article.
Parmigiano Reggiano at the Anuga food and beverage exhibition (Germany)
Last October, at the Anuga food and beverage exhibition, a grated cheese produced in the US and bearing the term “Parmesan” was displayed on an advertising panel. The Consorzio Parmigiano Reggiano first obtained the intervention of the German authorities in charge of official controls, who requested the American company to remove the term “Parmesan” from the advertising material. Likewise, the Consorzio filed an ex parte precautionary appeal before the Cologne Court, which issued an injunction banning the operator from advertising in Germany cheese products with the term “Parmesan”. It also instructed to hand over to a court officer all products and materials in violation of the injunction. Please find here the Consorzio press release.
Prosecco protected in Singapore
The Consorzio application for the registration of “Prosecco” in Singapore – filed in 2019 and initially accepted by the local Intellectual Property Office (IPOS) – faced an opposition from Australian Grape and Wine Inc. (AGWI). It was based on two arguments: the application allegedly contained the name of a plant variety and was likely to mislead the consumer as to the true origin of the product; it did not fall within the meaning of a GI as defined in the Law of Singapore. The AGWI’s opposition succeeded before General Division of the High Court. The Consorzio then contested this outcome before the Singapore’s Court of Appeal, which on 8 November, concluded that AGWI has failed to establish that the GI application is likely to mislead the Singapore consumer as to the true geographical origin of “Prosecco”. Please find here the Singapore’s Court of Appeal decision and the Consorzio’s press release.
More information on GIs protection and enforcement is available on the dedicated pages of the oriGIn website Relation with Trademarks and Enforcement.
