Geografiese aanduidings: wat die Desperados tequila-kas wys

A geographical indication protects a product name tied to a place of origin, such as tequila or champagne, and can also stop a name or presentation that merely evokes the protected product. Naming a protected product as an ingredient is allowed, however, if it is genuinely present and the label makes clear it is only a flavouring, as the Amsterdam District Court held in the Desperados case in 2019.

Wat is 'n geografiese aanduiding, en waarteen beskerm dit?

Names such as tequila, champagne, parma ham and gouda holland are reserved for products from a defined place that meet defined production rules. Within the EU, spirit drinks were protected under Regulation (EC) No 110/2008, since replaced by Regulation (EU) 2019/787.

Protection is not limited to counterfeits sold under the protected name. It also covers direct or indirect commercial use that exploits the reputation of the name, and evocation: a reference that brings the protected product to the consumer’s mind, even where the true origin is stated.

Wat het in die Desperados-saak gebeur?

Desperados is a beer that Heineken flavours with tequila. The Consejo Regulador del Tequila, the Mexican body that regulates the designation, asked the Amsterdam District Court to stop Heineken from using the word “tequila” on the bottle.

On 15 May 2019 the court dismissed all claims and ordered the Consejo to pay Heineken’s legal costs of €31,161 (ECLI: NL: RBAMS: 2019: 3564). Tequila had been registered as a geographical indication under Regulation 110/2008 by Regulation (EU) 2019/335, in force since 20 March 2019.

Waarom het die hof in Heineken se guns beslis?

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)”. A reasonably observant average consumer would understand that tequila was a flavouring in a beer, in a relatively small share.

The court applied the Champagner Sorbet judgment of the EU Court of Justice (ECLI:EU:C:2017:991) by analogy. Quantity is important but not decisive; what matters is whether the ingredient gives the product an essential characteristic. The Consejo had not shown that tequila’s contribution to the taste was negligible.

The Consejo appealed, but the parties announced a confidential settlement in July 2021, and no ruling on the merits followed on appeal.

What should you check as a producer using a protected name?

Using a protected name as an ingredient reference is possible within limits. Check before the label goes to print:

• Is the protected product genuinely present in the recipe?
• Does it give your product a characteristic taste, or is its contribution negligible?
• Do the description and ingredients list state clearly that it is an ingredient or flavouring?
• Does the overall presentation, including prominence, typography, imagery and colour, suggest that your product itself is the protected product?

What should you check as a holder of a protected designation?

Evocation does not require confusion or bad faith, which makes this field wider than ordinary trade mark law. Before you act against a third party, check:

• Whether the name is registered for the relevant product category, and from what date.
• Whether the other product actually contains your product, and in what share.
• Whether you can prove that its contribution to the taste is negligible.
• Whether you can rely on the EU regulation directly, since the Amsterdam court denied direct effect to the EU-Mexico agreement.

What can we do for you with geographical indications?

Our intellectual property lawyers act for producers and designation holders; see also our korporatiewe prokureur bladsy.

• We check your label and ingredients list against the geographical indication and food information rules before production.
• We assess whether a competitor’s product evokes or exploits your protected designation.
• We send a cease-and-desist letter and negotiate a labelling change.
• We conduct infringement proceedings, including preliminary relief proceedings (kort geding).

Opsomming

• A geographical indication protects more than the name itself; it also covers presentations that evoke the protected product.
• In die Desperados-geval, die Amsterdam District Court dismissed the claim because tequila was genuinely present and clearly labelled as a flavouring (ECLI:NL:RBAMS:2019:3564, 15 May 2019).
• Following Champagner Sorbet, the question is whether the ingredient gives the product an essential characteristic, not only how much is used.
• The appeal ended in a confidential settlement in 2021, so there was no ruling on appeal.

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