Trade mark guidelines, Part C Opposition, Section 6 Geographical Indications (Article 8(6) EUTMR)

Part C Opposition Section 6

1 Introduction

Pursuant to Article 8(6) EUTMR, designations of origin and geographical indications protected under Union legislation or national law may be invoked in an opposition against an EUTM application. When defining the protection given to these specific designations, the regulations refer simply to the protected/registered names, regardless of whether those names refer to a 'protected designation of origin' (PDO) , a ‘protected geographical indication’ (PGI) or a ‘geographical indication’ (GI). Moreover, the scope of protection is not affected by any distinction between PDOs, PGIs and GIs. Therefore, this section will refer to these protected names as geographical indications (GIs) without making any distinction between them. The essential function of the protection of a GI is to guarantee to the consumer the geographical origin of the goods and the special qualities connected with that origin (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 147). Protection of GIs on relative grounds is complementary to the ex officio protection on absolute grounds (Article 7(1)(j) EUTMR). While there is interaction and overlaps with protection under absolute grounds, there are differences both in terms of procedure and substance arising from the relative grounds nature of protection under Article 8(6) EUTMR. Article 8(6) EUTMR reads: Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

1. an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

2. that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark. Article 8(6) EUTMR is, therefore, a framework provision in the sense that it is the applicable EU legislation, Member State law or international agreement that determines the conditions of acquisition and scope of protection of the GI invoked. Furthermore, as will be explained below, the exhaustive nature of the EU system of protection of GIs in specific product areas determines the extent to which a GI protected under national law or international agreement is eligible to form the basis of an opposition under Article 8(6) EUTMR. For a general overview of GIs see the Guidelines, Part B Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (Article 7(1)(j) EUTMR).

GIs are protected on various levels, under EU law, national law or international agreements, and cover various product areas such as wine, spirit drinks and agricultural products or craft and industrial products.

2.1 GIs protected under EU law

As regards EU legislation protecting GIs, the following EU regulations are currently in place: Regulation (EU) 2024/1143 of the European Parliament and of the Council of

11 April 2024 on geographical indications for wine, spirit drinks and agricultural products, as well as traditional specialities guaranteed and optional quality terms for agricultural products, amending Regulations (EU) No 1308/2013, (EU) 2019/787 and (EU) 2019/1753 and repealing Regulation (EU) No 1151/2012, later referred to as ‘Regulation (EU) 2024/1143’, which entered into force on 13 May 2024 and applies from that date . Regulation (EU) 2023/2411 of 18 October 2023 on the protection of geographical

indications for craft and industrial products and amending Regulations (EU) 2017/1001 and (EU) 2019/1753, later referred to as ‘Regulation (EU) 2023/2411’, which entered into force on 16 November 2023, and fully applies as of 1 December 2025. For more information see also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 2. GIs protected under the above Regulations may be a valid basis for an opposition under Article 8(6) EUTMR, to the extent that they allow the person authorised under the applicable law to exercise those rights to prevent the use of a subsequent mark pursuant toArticle 26(1) of Regulation (EU) 2024/1143 and Article 40 (1) Regulation (EU) 2023/2411, which determine the protection of GIs respectively.

2.1.1 The exhaustive nature of the EU system of protection

In the areas of agricultural products, wines and spirit drinks, protection at EU level is exhaustive in nature, which means that oppositions under Article 8(6) EUTMR cannot be based on national rights in these areas. This is because the EU system of GI protection overrides and replaces national protection of GIs for agricultural products, wines and spirit drinks.

Therefore, for these products, the opponent must invoke the relevant EU legislation in the notice of opposition as the reference to national law provisions will not be considered relevant. As an example, in two oppositions based on the GI ‘Vinho Verde’ the national right was invoked instead of the EU GI. As a result, the oppositions had to be rejected.

As regards GIs for craft and industrial products, the new EU system under Regulation (EU) 2023/2411 is exhaustive as of 3 December 2026 , overriding and replacing national protection of GIs for craft and industrial products. As of that date, these national rights cease to exist and only GIs protected at the EU level constitute valid rights to be invoked in new proceedings based on Article 8(6) EUTMR. From 1 December 2025 (the entry into force of Regulation (EU) 2023/2411) until 2 December 2026, Member States may notify the Office and the Commission of a request to register EU‐level GIs based on their national legally protected names, or names established by usage, for craft and industrial products (Article 70(2) of Regulation (EU) 2023/2411). The resulting EU-level GI rights will be new rights with their own priority dates, which will run from the date the request is notified to the Office and the Commission, provided that EU-level protection is granted (Article 70(3) of Regulation (EU) 2023/2411). However, if the Office and the Commission are not informed on the same day, the priority date will be the latest date by which the request was notified to both institutions. In such circumstances these rights can be invoked as earlier rights under Article 8(6) EUTMR. For more information about the recognition of the exisitng/establisehd GIs, please see Guidelines for examination of Geographical Indications for craft and industrial products, Part D GI Procedures, Section 5.

2.2 GIs protected under the laws of Member States

GIs protected under the laws of Member States may be a basis for opposition under Article 8(6) EUTMR, but only to the extent that no uniform EU protection is in place for the given category of goods. This is the case, for example, for craft and industrial products (e.g. ‘HEREND’ for porcelain goods originating from Herend, Hungary), until 2 December 2026. As indicated in paragraph 2.1.1, existing national rights for GIs for craft and industrial products are no longer valid as of 3 December 2026 (Article 70 (1) of Regulation (EU) 2023/2411). Therefore those GI’s are only a valid basis for Article 8(6) EUTMR before that date. As they are protected by national laws, the opponent must rely on those laws and the substantiation requirements must be fulfilled (see paragraph 2.4). When the registration procedure is pending based on the request made pursuant to Article 70(2) of Regulation (EU) 2023/2411, national protection may be extended by the Member State concerned until the registration procedure at EU level has been completed and the decision is final (Article 70(3) of Regulation (EU) 2023/2411).

2.3 GIs protected under international agreements

Notwithstanding that Article 8(6) EUTMR does not explicitly mention GIs protected under international agreements, the reference to ‘Union legislation’ and ‘national law’ naturally includes international agreements as they form part of the legal order of the European Union or the Member State that is a party to the international agreement. In order for an opposition under Article 8(6) EUTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the beneficiary of the relevant GI to take direct legal action to prohibit the use of a subsequent trade mark. In the latter respect, international agreements are not always self-executing. This depends on the characteristics of the agreement itself and on how they have been interpreted in the relevant jurisdiction. For example, the Office considers that the provisions of the Lisbon Agreement (in particular Articles 3 and 8) are not selfexecuting. As expressly indicated by Article 8 of the Lisbon Agreement, it is the relevant national legislation that must determine which type of legal actions may be taken, their scope and whether these legal actions include allowing the proprietor of an appellation of origin to prohibit the use of a subsequent trade mark. Therefore, in such cases, the requisite national legislation must be adduced as this is a necessary component in order for the opponent to prove that the GI in question can prevent use of the subsequent mark and that the opponent is entitled by the law governing the right to exercise this right.

2.3.1 International agreements entered into by the EU

GIs deriving from agreements between the EU and third countries can be invoked under Article 8(6) EUTMR if the provisions of these agreements vest the GI in a particular beneficiary or a precise class of users that have a direct right of action. Article 8(6)(i) EUTMR requires that a GI already be applied for and be subsequently registered. However, this provision can also be applied by way of analogy to thirdcountry GIs protected under international agreements. In the case of international agreements to which the EU is a party, the date of entry into force of the international agreement is deemed to be the date of priority of such a GI (and in the case of a third-country GI added subsequently to the list of protected GIs in the relevant agreement, the date of entry into force of the addition), unless the international agreement stipulates an earlier date of priority. The EU is a Contracting Party to the Geneva Act of the Lisbon Agreement, which entered into force on 26 February 2020. GIs originating in non-EU countries protected under the Geneva Act of the Lisbon Agreement can be relied on in oppositions under Article 8(6) EUTMR provided that they were granted protection in the EU by the Commission or the Office through Regulation (EU) 2019/1753 of the European Parliament and of the Council of 23/10/2019 on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (the ‘Regulation (EU) 2019/1753’) and provided that the contested trade mark was applied for after the notification of WIPO to the Commission or the Office of the international registration of the GI. Certain provisions of that Regulation have been amended by Regulation (EU) 2023/2411 to ensure coherence in relation to the establishment of a Union system for the protection of GIs for craft and industrial products. If the contested mark was applied for before the notification to the Commission or the Office of the international registration but after the filing of the international registration with the International Bureau, the GI only constitutes an earlier right if the opponent proves that the trade mark was applied for in bad faith. The substantive law on which the opposition must rely when invoking GIs protected under the Geneva Act is Article 11(1) and (3) of the Geneva Act in conjunction with Regulation (EU) 2019/1753. For further details, see paragraph 3.2 below and the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (Article 7(1)(j) EUTMR), paragraph 6.2.3, GI is Protected under the Lisbon System (Geneva Act).

2.3.2 International agreements entered into by Member States including the Lisbon Agreement

For the reasons set out in paragraph 2.1.1 above, a GI protected under an international agreement concluded by Member States (either among Member States or with third countries) cannot be invoked as an earlier right under Article 8(6) EUTMR because

it encroaches upon the exhaustive nature of EU law in the relevant areas (currently certain foodstuffs and other agricultural products, wines and spirit drinks). Until recently, this only affected agricultural products, wines and spirit drinks, however, Regulation (EU) 2023/2411 provides for a new uniform and exclusive EU system for GIs for craft and industrial products. Pursuant to Article 70(1), national specific protection for GIs for craft and industrial products will cease to exist from 3 December 2026. Consequently, from this date, GI protection at the national level deriving from these international agreements ceases for this sector. In the ‘Budějovický Budvar’ case (08/09/2009, C‑478/07, Budějovický Budvar, EU:C:2009:521), the Court discussed the exhaustive nature of EU law as regards GIs originating from Member States. In the Office’s interpretation, this also applies a fortiori to third country GIs in the relevant product fields that are protected in the territory of a Member State through an international agreement concluded between that Member State and a non-EU country. The consequences of the exhaustive nature of the EU GI system equally apply to appellations protected in an EU Member State by virtue of the Lisbon Agreement, but with some particularities for the craft and industrial sector: Regarding appellations of origin originating in an EU Member State that is party to

the Lisbon Agreement( ), for products falling within the scope of Regulation (EU) 2023/2411, that Member State shall, by 2 December 2026, choose to request either (i) to register that appellation of origin under Regulation (EU) 2023/2411, or (ii) to cancel the registration of that appellation of origin in the International Register and notify the Office of its choice (Article 64(10) of Regulation (EU) 2023/2411). The Office will treat appellations of origin originating in an EU Member State that is party to the Lisbon Agreement as ‘national specific protection’ to which Article 70(1) of Regulation (EU) 2023/2411 applies mutatis mutandis. Appellations of origin originating in a non-EU Member State and protected under

Lisbon Agreement in one of the EU Member States for products falling within the scope of Regulation (EU) 2023/2411, but not yet protected under that Regulation, continue to exist and can be used as a basis for opposition under Article 8(6) EUTMR. The only situations where GIs protected under an international agreement concluded by Member States can still be invoked as an earlier right under Article 8(6) EUTMR are the following. International agreements concluded with third countries by a Member State before

its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate the incompatibilities between an agreement concluded before a Member State’s accession and the Treaty (see Article 307

of the Treaty establishing the European Community, now Article 351 (TFEU), as interpreted by the Court in its judgment of 18/11/2003, C‑216/01, Budějovický Budvar, EU:C:2003:618, § 168-172). International agreements concluded with a third country by a Member State after its

accession to the EU, but before the entry into force of the uniform EU system of protection in the given product area. As Member States are under an obligation to eliminate incompatibilities with EU law, the Office will apply the last two exceptions only when the opponent expressly

refers to the exception and supports it with a coherent line of argument and

relevant evidence (in particular, concerning the date of entry into force of the cited international agreement in the Member State where protection is claimed and its continued validity). General allegations by the opponent (such as merely citing the relevant international agreement) will not be sufficient in of themselves for the Office to consider that one of the latter two exceptions applies.

2.4 Substantiation

2.4.1 General rules

The requirements on substantiation are governed by Article 8(6) EUTMR in combination with Article 46(1)(d) EUTMR and pursuant to Article 7(2) EUTMDR (in particular Article 7(2)(e) and Article 7(4) EUTMDR , which provide that the opponent must prove the existence, validity and scope of protection of the earlier GI, as well as provide evidence of its entitlement to file the opposition. The relevant information and evidence must be in the language of the proceedings, or accompanied by a translation. Consequently, in particular, according to Article 7(2)(e) EUTMDR, to substantiate its right, the opponent must provide the Office with evidence of: 1) the existence, validity and scope of protection of the GI invoked; 2) its entitlement to file the opposition, namely, that it is authorised under the relevant law to exercise the rights arising from a GI and that the applicable law confers on it a direct right of action to prohibit unlawful use of a GI. To prove the above, the opponent must submit, in the language of proceedings, pertinent documents emanating from the competent authorities and relevant law, including national law, if applicable. The evidence must prove all the particulars of the GI, including: the protected name;

that it is protected as a GI;

the specific goods covered by the protection;

that it existed before the contested mark’s priority date;

that the applicable law confers on the beneficiary of the GI a direct right of action

against unauthorised use and that the opponent is such a beneficiary.

2.4.2 GIs protected under EU Regulations

For GIs protected in the EU that are included in the Union registers of GIs, the Office has ex officio knowledge of the contents of those registers, including the documentation that is incorporated and, as long as it is in the language of proceedings, this knowledge will be taken into account in the assessment of substantiation without the need for the opponent to present evidence. As regards the Union register of GIs for wines, spirit drinks and agricultural products, while the European Commission remains responsible for the relevant data in the Union register, the Office has ex officio knowledge because it is tasked with maintaining it and keeping it up-to-date with the relevant data that the Commission shall make available (Article 22 in conjunction with Article 93(1) of Regulation (EU) 2024/1143). As regards the Union register of GIs for craft and industrial products, the Office is itself responsible for its establishment and maintenance (Article 37 of Regulation (EU) 2023/2411). The consequences for opponents substantiating oppositions under Article 8(6) EUTMR based on GIs protected under EU Regulations are: 1. GI for wine, spirit drinks and agricultural products The opponent is not required to submit evidence on the existence and validity of the

GI. If the opponent is a ‘recognised producer group’ under Article 33 of Regulation (EU)

2024/1143 and this information is included in the Union register, it is not required to submit evidence of entitlement to file an opposition under Articles 32(4)(b) and 33(3) of Regulation (EU) 2024/1143. If not, the opponent must submit evidence showing its entitlement to file an opposition, for instance, showing that it is a producer group under Regulation (EU) 2024/1143 entitled to act. 1. GI for craft and industrial products The opponent is not required to submit evidence on the existence and validity of the

GI. If the opponent is the producer group entered into the Union register as the GI

applicant, it is not required to submit evidence of entitlement to file an opposition under Article 45(2)(b) of Regulation (EU) 2023/2411. If not, the opponent must submit evidence showing its entitlement to file an opposition, for instance, showing that it is a producer group under Regulation (EU) 2023/2411 entitled to act. The Office’s ex officio knowledge of the content of the Union registers for GIs can facilitate the substantiation of the opposition only to the extent that the relevant information is in the language of proceedings. It is the opposing party’s obligation to

verify the correctness, completeness, and language of information that it intends to rely on and to provide any additional information that may be necessary.

2.4.3 Reference to an online database

Where the evidence concerning the filing or registration of the earlier rights referred to in Article 8(6) EUTMR, or the evidence concerning the content of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source. For GIs protected in the EU (including non-EU GIs protected at EU level through bilateral and multilateral agreements) and entered in the Union registers for GIs (i.e. registers for (i) wine, spirit drinks and agricultural products and (ii) craft and industrial products), the opponent may refer to the Office’s GIview database, especially for information going beyond the mere content of the Union registers for GIs given that GIview is not only a point of access to both registers, but also includes additional data from the Member States (so-called extended data) on which the opponent may legitimately rely (seeparagraph 4.2.3.2). In cases other than the above, the opponent may submit the required evidence by referring to an online database of the competent authority which is publicly accessible and free of charge, as long as the search environment is in the language of the proceedings. It is the opponent’s responsibility to check that the online source referred to contains all the necessary information and is up to date, and if not, to submit additional evidence from an official source completing the missing information. If, for example, the database does not provide sufficient information on the opponent’s entitlement to exercise the rights arising from the GI, further documents must be submitted, such as national legislative instruments conferring on the opponent the right to enforce the GI against unlawful use. Furthermore, to prove that it is entitled to prohibit use of a subsequent trade mark under the relevant law, the opponent must specify the provisions of the applicable law it intends to rely on. If the law invoked is national law, it must also provide its contents by adducing official publications of the relevant provisions or jurisprudence, or by referring to an online source recognised by the Office (see paragraph 4.2.4.3). The opponent must also prove that the case fulfils all the conditions of the scope of protection under the relevant provisions. The above provisions and related guidance apply, in principle, to all actions, regardless of whether they are based on EU GIs, GIs protected by the laws of Member States or GIs protected by international agreements. However, as explained above, for GIs protected by EU Regulations, the Office – as keeper of registers − is considered to be aware of certain details that facilitate the substantiation of opposition based on Article 8(6) EUTMR. See the Guidelines, Part C, Opposition, Section 1, Opposition proceedings, paragraph 4.2 ).

3 Scope of protection of GIs

3.1 Situations covered by the EU Regulations

The scope of protection of GIs protected under the EU Regulations is governed by Article 26(1) of Regulation (EU) 2024/1143and Article 40(1) of Regulation (EU) 2023/2411, which prevent GIs from being used in a range of scenarios. Article 26(1) of Regulation (EU) 2024/1143 (GIs for wine, spirit drinks, and agricultural products) refers to a graduated list of prohibited acts against which GIs are protected: (a) any direct or indirect commercial use of the GI in respect of products not covered

by the registration, where those products are comparable to the products registered under that name or where use of that GI for any product or any service exploits, weakens, dilutes, or is detrimental to the reputation of, the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products

or services is indicated or if the protected name is translated, transcribed or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar, including when those products are used as an ingredient; (c) any other false or misleading indication as to the provenance, origin, nature

or essential qualities of the product that is used on the inner or outer packaging, on advertising material, in documents or information provided on online interfaces relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the

product. Article 40(1) of Regulation (EU) 2023/2411 (GIs for craft and industrial products) contains a similar graduated list but with the following differences: subsection (a) does not have a reference to ‘any product or any service’ underlined

above but states that ‘where the use of the name exploits, weakens, dilutes, or is detrimental to the reputation of a GI’. Nevertheless, despite the slight difference in wording, both provisions have the same scope and Article 40(1) of Regulation (EU) 2023/2411 is taken to also potentially apply to ‘any product or any service’ (see 25/06/2025, T-239/23, NERO CHAMPAGNE / Champagne (GI), § 50).

subsections (a) and (b) do not refer to ‘parts or components’, which would be the

‘parts or components’ are regulated separately under Article 41 of Regulation 2023/2411, it is in a manner that mirrors Article 40 by ruling out use that would exploit, weaken, dilute, or be detrimental to, the reputation of the geographical indication, and similar principles will apply. It must be emphasised that what applies are the specific conditions of the scope of protection as laid down in the applicable provisions and not, for example, the ‘similarity of signs’, ‘similarity of goods and services’ or ‘likelihood of confusion’. Detailed information on the scope of protection of GIs protected under the relevant EU regulation is included in the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR) (e.g. definitions of direct and indirect use, imitation, evocation, misuse, misleading indication and practices, objectionable products).

3.1.1 Use, including exploitation, weakening, dilution or detriment to the reputation of a GI

The cases involving the use of a GI for comparable products falling under Article 26(1) (a) of Regulation (EU) 2024/1143 or Article 40(1)(a) of Regulation (EU) 2023/2411 are normally part of the Office’s ex officio assessment of absolute grounds. See also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 4. If an opponent claims in its submission that, for example, an EUTM application contains a GI and the goods applied for are comparable to those covered by that GI (or the goods constitute the specific object of services such as retail, wholesale, import/export, provision of drink and food, production of [the product covered by the GI] for others), the Office may, if this is indeed the case and depending on the specific circumstances, reopen the examination on absolute grounds. However, under Article 8(6) EUTMR in combination with the abovementioned provisions a GI can be invoked against goods and services that, in principle, would not be objected to ex officio under absolute grounds , if there is use of the GI in the contested EUTM application and the opponent shows that such use would exploit, weaken, dilute or be detrimental to the reputation of the GI. On ‘use of a GI’ see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1) (j) EUTMR), paragraph 4.1. Therefore, the provision regarding the reputation of the protected name, mentioned above, can only be relied upon when there is ‘use’ of a GI in the contested trade mark, and the opponent shows the possible exploitation, weakening, dilution or detriment to the reputation of the GI for any of the contested goods or services.

The reputation of GIs depends on their image in the minds of consumers, and that image, in turn, depends essentially on particular characteristics and more generally on the quality of the product. It is on the quality of the product that its reputation is based (14/09/2017, C‑56/16 P, PORT CHARLOTTE, EU:C:2017:693, § 81-82). Therefore, contrary to the situation with trade marks, where reputation is quantitatively assessed, the reputation of a GI is intimately linked to the quality of the product that it designates. All registered GIs offer a guarantee of quality due to their geographical provenance. Therefore, the Office considers that GIs are intrinsically reputed within the meaning of Article 26(1)(a) of Regulation (EU) 2024/1143 or Article 40(1)(a) of Regulation (EU) 2023/2411 by the mere fact that they are registered. This is irrespective of whether a GI has been registered on the basis of a claim in the application to its reputation being essentially attributable to its geographical origin (Article 46(1)(b) and Article 46(2)(b) of Regulation (EU) 2024/1143, for agricultural products, Article 93(1)(b)(i) of Regulation (EU) No 1308/2013 , for wines, Article 3(4) of Regulation (EU) 2019/787, for spirit drinks, and Article 6(1)(b) Regulation (EU) 2023/2411, for craft and industrial products). A GI may, however, because of its longstanding presence on the market, marketing efforts and commercial success, acquire notoriety beyond the intrinsic baseline reputation accorded to all GIs which will increase the potential for exploitation, weakening, dilution or detriment to its reputation. Consequently, opponents do not have to submit evidence of the reputation of the GI. Nevertheless, opponents must submit convincing arguments and/or evidence

regarding:

- exploitation, weakening, dilution or detriment to the reputation of the GI; - the notoriety of the GI on the market if that is a factor that the opponent considers relevant. The submission of such evidence is, in principle, also necessary to rebut the presumption that the function of the GI in question is safeguarded in relation to the goods and services, which have been adequately restricted as explained in paragraph 3.1.3 Scope of protection of GIs in relative grounds – further aspects. The Court held that ‘[t]he incorporation in a trade mark of a name which is protected … cannot be held to be capable of exploiting the reputation of that [name] … if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered with the [name] concerned or the … product in respect of which it is protected’ (14/09/2017, C‑56/16 P, PORT CHARLOTTE, EU:C:2017:693, § 115). As a rule, general allegations (such as merely citing the relevant wording of the EU regulations) of exploitation, weakening, dilution or detriment to the GI’s reputation will not be sufficient in of themselves to prove it. The opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how the alleged injury might occur, taking into account both the rights concerned, the goods and services in question and all the relevant circumstances.

3.1.2 Evocation, imitation, misuse and misleading indications and practices

For ‘evocation’, ‘imitation’, ‘misuse’ and ‘misleading indications and practices’ see Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 4, and more precisely paragraphs 4.2 and 4.3. The Court of Justice has clarified that the concept of ‘evocation’ extends to all uses that take unfair advantage of the reputation enjoyed by the GI through association with it (09/09/2021, C‑783/19, Champanillo, EU:C:2021:713, § 50, see also the Opinion of the Advocate General Pitruzzella of 29/04/2021, C‑783/19, Champanillo, EU:C:2021:350, § 36-37). This is particularly relevant in cases based on Article 8(6) EUTMR where the opponent can submit the relevant evidence establishing the extent of its GI’s reputation and its potential exploitation. Moreover, the Court of Justice clarified that the legal provisions on ‘evocation’ must be interpreted to protect registered GIs against conducts/practices relating to both products and services. Furthermore, it is not necessary for the product covered by the protected GI and the goods or services covered by the EUTM to be identical or similar to establish evocation (09/09/2021, C‑783/19, Champanillo, EU:C:2021:713, § 52, 61, 66). The following examples illustrates this point.

Examples where the Court rejected evocation include the following.

3.1.3 Scope of protection of GIs in relative grounds – further aspects

The scope of protection given to GIs under EU regulations safeguards their function, which is to designate goods as being from a particular geographic origin and as having the special qualities connected therewith. Unlike other signs, GIs do not indicate the commercial origin of goods and afford no protection in this regard. It can be presumed that a trade mark that contains or consists of a GI, registered solely in respect of products complying with the specification of the GI or for related services, will not unduly exploit the reputation of that GI within the meaning of Article 26(1)(a), 2nd part, of Regulation (EU) 2024/1143 or Article 40(1)(a), 2nd part, of Regulation (EU) 2023/2411, since it will only be deemed to be used, on the market, in respect of products complying with the quality standards relating to that GI or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a GI pursued by Regulation (EU) 2024/1143 and by Regulation (EU) 2023/2411 is presumed to be fulfilled in that situation (see, 25/06/2025, T-239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 58). However, the Court has clarified that the mere fact that a mark containing a GI limits its registration to products complying with the specification and to services relating to such products does not in itself preclude the existence of the prohibited acts provided for in Article 26(1) (a), 2nd part, and (b) to (d) of Regulation (EU) 2024/1143 or Article 40(1) (a), 2nd part, and (b) to (d) of Regulation (EU) 2023/2411 (see, 25/06/2025, T-239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 51). Furthermore, the Court has stressed that, in the context of exploitaiton of reputation, that such a presumption may be overturned when it can be demonstrated, taking into account the particular characteristics of the EUTM application and the relevant circumstances of the case and on the basis of concrete, substantiated and consistent elements, that a given EUTM application is likely to unduly exploit the reputation of a GI. This applies even if it only covers products that comply with the GI’s specification or related services. Therefore, when such elements are brought to the attention of the adjudicating bodies of the EUIPO, those bodies must examine them to ascertain

whether they allow that presumption to be rebutted (25/06/2025, T‑239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 58-59, 68). Consequently, an opposition against an appropriately restricted EUTM application will not succeed, unless the abovementioned presumption has been rebutted or if it is shown that the contested trade mark contravenes any of the other prohibited acts stipulated in Article 26(1) of Regulation (EU) 2024/1143 or Article 40(1) of Regulation (EU) 2023/2411. For general information on limits to the scope of GI protection, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 4.5.

3.2 Scope of protection of GIs protected under national law or international agreements

The scope of protection of GIs protected under national law or international agreements, including agreements concluded by the EU with third countries, is governed by the relevant provisions (e.g. Hungarian GI ‘HEREND’, by Article 109 of Act XI of 1997 on the protection of trade marks and geographical indications; for the GI ‘Mezcal’, by the relevant provisions of the Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks (OJ L 152, 11.06.1997, page 16). The substantive provisions of the agreement concerned may for instance include specific requirements or authorisation for the use of the protected term. See also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 6.2. As regards the scope of protection of GIs protected under the Geneva Act to which the European Union is a contracting party, and in particular its Article 11, please see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 6.2.3, GI is protected under the Lisbon System (Geneva Act). The Office considers that in spite of the different wording of Article 11(1) of the Geneva Act, the scope of protection corresponds to that of the GIs protected under the EU Regulations (i.e. against direct and indirect use of the GI for the same and comparable products, exploitation, weakening, dilution and detriment of/to reputation of the GI, misuse, imitation or evocation or other misleading indications and practices). In addition, the Office considers that the notion of ‘goods that are not of the same kind’ is analogous to the notion of ‘non-comparable goods’ under the EU Regulations providing for the protection of GIs. The Office will therefore apply the same standard to GIs protected under the Geneva Act and will examine potential conflict with earlier GIs, bearing in mind, mutatis mutandis, the rules contained above in the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (Article 7(1)(j) EUTMR), paragraph 4.

Finally, an opposition based on Article 8(6) EUTMR can be successful against goods and services that are not comparable to those for which the GI is protected, provided that the opponent submits evidence and arguments to prove that either Article 11(1)(a) (ii) or Article 11(1)(b) of the Geneva Act applies to such non-comparable goods or services. In this regard the Office will apply the same standard as in the examination of cases based on Article 8(6) EUTMR and invoking EU GIs as a basis (see paragraph 3.1 above).