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Trademark clearance in the EU: why geographical indications matter more than before

Peter Åkerlund
9.7.2026
Reading time:  8 min
Recent EU legislative reforms and case-law developments are reinforcing the protection of geographical indications (GIs) and reshaping their interaction with trademarks. In particular, the concepts of evocation, comparability of goods and exploitation of reputation are being applied more broadly, limiting the effectiveness of traditional risk mitigation strategies such as specification restrictions. This article reviews the current framework and highlights key implications for trademark clearance, prosecution and enforcement.

Links to the cited cases and source materials are provided at the end of this article.

1. Takeaways for trademark strategy

The current developments suggest a continued strengthening of GI protection, with clear practical implications: 

  • Clearance should be broader than trademark register searching. Searches should cover EU and national trademark registers, GI registers, protected product specifications and the applicant’s intended commercial context, including packaging, marketing claims and planned product positioning. 
  • Specification restrictions remain useful but are not conclusive. After NERO CHAMPAGNE, limiting goods to those complying with a GI specification should be treated as a rebuttable risk-management measure, not as a safe harbour. 
  • Evocation should be assessed from the perspective of the average European consumer. The key question is whether the sign creates a sufficiently direct and clear mental link with the protected name; intent to evoke the GI is not required. 
  • The legal analysis should separate the relevant grounds of objection. Clearance and prosecution strategy should separately consider direct or indirect commercial use, evocation, misleading indications and exploitation of reputation, rather than treating GI risk as a single undifferentiated issue. 
  • Craft and industrial GIs will expand the clearance universe. GI-related risk assessment should no longer be limited to traditional food, wine and spirit categories, as protected names may increasingly arise in sectors such as textiles, glass, ceramics, jewellery, cutlery and other craft or industrial products. 
  • Online use should be part of GI risk assessment. Intended domain names, websites, marketplace listings, social media handles and online advertising should be reviewed alongside the formal trademark specification. 

In practical terms, GI clearance is particularly important where the goods are origin-sensitive, marketed by reference to tradition, quality, terroir, craftsmanship or local reputation, or where consumers are likely to understand geographical wording as indicating product characteristics rather than merely as branding. 

  • Wine, spirits and alcoholic beverages, where GI protection is long-established and reputation-based objections are frequent. 
  • Foodstuffs and agricultural products, including cheese, meat products, oils, olives, fruit, confectionery, bakery products and other products commonly sold with regional quality claims. 
  • Non-alcoholic drinks and food-adjacent products, especially where they may be consumed as alternatives to, or marketed alongside, GI-protected wines, spirits or food products. 
  • Ingredients, processed foods and flavour references, where a GI may be used or alluded to as an ingredient, flavour, style or quality cue. 
  • Craft and industrial products, including textiles, glass, ceramics, porcelain, stone, jewellery, cutlery, metal goods, lace, embroidery, musical instruments and other products whose value may depend on regional know-how or manufacturing tradition. 
  • Luxury, lifestyle and hospitality-related goods and services, where branding may seek to borrow prestige from a protected place name or from the reputation of GI-protected products. 

2. The legal framework: a reinforced GI system

At EU level, conflicts between GIs and EU trademarks are governed both by the EU Trade Mark Regulation (EUTMR) and sector-specific GI regulations. 

Under Article 7(1)(j) EUTMR, trademarks must be refused where they conflict with protected designations of origin or geographical indications under EU or national law.  

Similarly, Article 8(6) EUTMR enables GI holders to oppose later trademark applications where a prior GI application exists and confers the right to prohibit the use of the later sign.  

The framework has been significantly modernised by: 

  • Regulation (EU) 2024/1143 (agricultural products, wines, spirits), and 
  • Regulation (EU) 2023/2411 (craft and industrial GIs).  

These instruments harmonise the protection of both agricultural and non-agricultural GIs, while introducing clearer rules on their relationship with trademarks. 

3. Priority and coexistence: strict rules with limited safe harbours

The new legislation confirms a strict priority-based system: 

  • Trademark applications submitted after a GI application must be refused if their use would contravene GI protection rules. 
  • Trademarks registered in breach of these rules are liable to be declared invalid.  

At the same time, there is a limited good faith safeguard: 

  • Earlier trademarks may continue to be used alongside a GI, provided they were applied for, registered or used in good faith before the GI filing date and no other invalidity grounds apply.  

This coexistence mechanism remains narrowly construed and does not prevent challenges based on misleading use or exploitation of reputation.

4. Broad substantive protection: beyond identical use

A central feature of GI protection is its wide scope, extending well beyond identical or similar goods. 

GIs are protected against: 

  • Direct or indirect commercial use on non-covered but comparable products; 
  • Misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is accompanied by expressions such as “style” or “type”; 
  • False or misleading indications as to origin or qualities; 
  • Any other practice liable to mislead consumers.  

Notably, “evocation” arises where a sufficiently direct and clear link is created in the mind of the average EU consumer between the sign and the protected GI.  

This broad protection has been a key driver of recent case-law. 

5. Commercial use and comparability: refining the limits

Recent decisions clarify that similarity of signs alone is insufficient. 

For example: 

  • In PORTSOY / Port and Quevedo Port / Port, no infringement was found where the relevant goods were not comparable and there was no commercial use, despite visual and phonetic similarity.  

Conversely, comparability may be established where: 

  • Products share objective characteristics, 
  • Are used together or in a complementary way, or 
  • Are marketed through overlapping channels. 

In Ohrid Pearls, pearls and precious metals were considered comparable due to their complementary use in jewellery and overlapping distribution channels.  

6. The evolving concept of evocation

Evocation remains one of the most contested aspects of GI protection. 

Findings of evocation 

In PriSecco / Prosecco, evocation was found based on: 

  • A high degree of visual and phonetic similarity; and 
  • Proximity between wines and non-alcoholic cocktails in terms of consumption and marketing. 

Similarly, in the KALAMATOS case, the similarity between the applied mark and PDOs Kalamata and Elia Kalamatas was sufficient to create a mental association for the relevant public in relation to olive products. 

Findings of no evocation 

By contrast: 

  • Burrata Campana / Burrata di Andria and 
  • Barcelona Mediterranean Wine / Méditerranée 

did not result in findings of evocation. 

These decisions illustrate that evocation requires a contextual assessment, taking into account the nature of the goods and the perception of the relevant public.

7. The “limitation theory” and its limits

Under EUIPO practice, objections based on GI conflicts may be addressed by restricting goods and services to those complying with the relevant GI specification. 

However, the NERO CHAMPAGNE judgment clarifies that this approach has limits. 

The General Court held that: 

  • Such limitations create only a rebuttable presumption that the trademark will not exploit the reputation of the GI; 
  • The presumption may be overturned based on concrete and substantiated evidence; 
  • Authorities must assess whether exploitation of reputation exists even for GI-compliant goods.  

This represents a shift towards a more substantive assessment. 

8. Exploitation of reputation and misleading indications

The same line of case-law highlights two important grounds of objection. 

Exploitation of reputation 

Trademarks may include GI elements, but not where: 

  • Their use takes unfair advantage of the reputation of the protected name.  

Importantly, this applies even where the goods comply with the GI specification.  

Misleading indications 

A mark may also be objectionable if it conveys misleading information regarding: 

  • origin, 
  • composition, or 
  • characteristics of the product. 

In NERO CHAMPAGNE, the term “NERO” was found capable of misleading consumers as to grape variety, colour, or the existence of a new type of champagne (NERO meaning black in Italian).

Conclusion

The interaction between geographical indications and trademarks is increasingly shaped by substantive considerations, particularly consumer perception and the protection of reputation. 

While the legal framework has become clearer, the outcome of individual cases remains highly fact-specific. For practitioners and brand owners, this underlines the importance of addressing GI-related risks at an early stage and as part of a broader trademark strategy. 

Appendix: case and source links

The following links provide convenient starting points for the cases and decisions referred to in this article.  

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Writer

Peter Åkerlund
IP Lawyer, Partner
+358 9 6866 8413
peter.akerlund@bocoip.com