Trade mark infringement through geographical indication of origin?

Does the marketing of a product with an incorrect geographical indication of origin constitute trade mark infringement? The Federal Court of Justice (BGH) has now decided this matter.

The operator of an internet mail order business offered on her website a salt designated as 'Raab Himalaya Salz gemahlen', on whose packaging under the designation 'Kristallsalz' the note 'Kristallines Speisesalz aus der Region des Himalaya' appeared. The geographical indication of origin 'Himalaya' was thereby set apart in terms of colour and spatial placement and thus particularly emphasised.

In fact, however, the advertised product did not originate from the Himalaya region but was extracted from a mountain range in the Pakistani province of Punjab.

An association against improper practices in commerce and trade from Cologne issued a cease and desist letter to the internet mail order business for advertising with the incorrect geographical indication of origin on the grounds of infringement of designation rights and demanded cessation of the advertising.

Decision of the Court

By Urteil vom 31.03.2016 – I ZR 86/13 – the Federal Court of Justice (BGH) decided in final instance that the internet mail order retailer must cease advertising with the geographical indication of origin 'Himalaya'.

Whoever uses a geographical indication of origin in commercial transactions for goods which do not originate from the territory designated by the geographical indication of origin may, if there is a risk of recurrence, be held liable by those entitled to assert competition law claims for injunctive relief based on designation rights, insofar as – as in this case – there exists a risk of misleading the public as to the geographical origin in the use thereof.

Conclusion

Misleading information concerning geographical indications of origin does not establish competition law protection, but rather protection based on designation rights. As a result, the infringer must cease the misleading information.