Trademark versus geographical term – the Gorgonzola UDRP cases

Under the UDRP, a geographical indication (GI) is usually not protected until a complainant can show that it additionally operates as a commerce or service mark. If a GI is protected beneath trademark regulation, it could fall beneath the remits of the UDRP.

Consorzio per la Tutela del Formaggio Gorgonzola, the house owners of the GORGONZOLA figurative mark, filed a number of UDRPs by way of the years. In two current cases, which date from late May 2021, the Gorgonzola model had seen one among its cases denied whereas the different case resulted in the switch of the area identify at subject.

Though Gorgonzola is a protected GI in the European Union, for the objective of the UDRP a complaining social gathering should solely depend on registered or unregistered trademark rights to show that they’ve standing to file a site dispute.

Guideline 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions discusses the points arising round geographical phrases. Most geographical phrases have to be registered as emblems to fulfil the first UDRP aspect. In distinctive circumstances, panels might discover that geographical phrases not registered as marks should be ample to claim rights. In such cases, the complainant should show that the model acquired secondary that means. This, nonetheless, may be very tough in observe beneath the UDRP.

In the Gorgonzola cases, the complaining social gathering relied on a figurative mark, which predominately options the Gorgonzola term. As the first aspect of the UDRP is a low-threshold check, panels have present in all earlier cases that the Gorgonzola model proprietor had ample standing to file a UDRP case.

Even although most complainants will overcome the first aspect in the event that they personal a trademark which can be a geographical term, proving the second and third parts of the coverage could also be difficult.

Respondents know that when coping with geographical phrases, they will efficiently justify a professional curiosity if they will show that they registered and use the term for its that means as a metropolis or location. Most respondents in the Gorgonzola cases relied on this argument. This in the end led to the complainant shedding three out of its 5 disputes held earlier than a panel.

So what classes might be drawn from these two virtually an identical cases which led to such completely different outcomes?

Gorgonzola used as a geographical identifier

In the first WIPO case (D2021-0690) regarding the area identify ‘’, the complainant did not fulfil the second aspect (and by consequence, the third aspect) of the coverage, even with proof that the respondent had been concerned in earlier situations of dangerous religion registrations.

The respondent proved that the area identify at subject was a part of a challenge to “promote and supply data on Italian cities” by way of his portal. The respondent relied on the indisputable fact that Gorgonzola remains to be the identify of an Italian metropolis in the hinterland of Milan. Further, he efficiently proved that this area identify was a part of a sample of fine-religion conduct – proudly owning round 250 different domains bearing the names of Italian cities.

In gentle of the proof supplied by each events, the panellist agreed that at this stage, there was no proof to point out that the respondent used or meant to make use of the area identify to draw web customers by exploiting the repute of the GORGONZOLA mark. However, the panellist fired a transparent warning to the respondent that “ought to that occur, after all the Complainant could be free to file a case beneath the Policy or in courtroom”. The remaining remark raises questions as as to if the panellist was satisfied that the true intent of the respondent was to make use of the area identify for its geographical that means. But with out proof to point out the opposite, it dominated in favour of the respondent.

Gorgonzola used to use its trademark worth

In the second WIPO Case (D2021-0722) rendered solely 10 days after the first one, the model proprietor, this time, received the case, and the panellist ordered the switch of the area identify ‘’ to the complainant. The Gorgonzola model as soon as once more relied on its figurative trademark to efficiently overcome the first aspect of the UDRP. Under the second aspect, the panellist agreed that the respondent primarily registered the area identify to take business benefit of the goodwill connected to the model by displaying pay-per-click on (PPC) hyperlinks on the web site, with hyperlinks linked to the cheese product.

The clear goal of the model and the intent of the respondent to learn from consumer confusion and derive business acquire was ample for the panellist to conclude that it didn’t have a professional curiosity in the area identify and used the area identify in dangerous religion.

The above cases spotlight how model house owners, who depend on emblems which might be additionally geographical identifiers, have to be cautious when going by way of the UDRP. Unless a respondent is clearly focusing on the model proprietor and exploiting its repute for some business acquire, the complaining social gathering might simply fail beneath the second and third aspect of the coverage if there’s any doubt in the panel’s thoughts that the respondent might use it for its geographical that means.

Moreover, the Gorgonzola model additionally misplaced two cases again in 2017 for comparable causes. Both respondents in these cases had been based mostly in the United States, the place the cheese shouldn’t be protected as a GI.

The panel in a single case (D2017-0554) said that there was no proof that the phrase gorgonzola was something apart from a descriptive term from a sort of cheese produced in the United States, which was the location of the respondent.

The jurisdiction of a respondent, due to this fact, might be detrimental to cases involving a geographical mark. Even beneath the UDRP, these rights stay territorial and thus don’t get pleasure from the similar safety worldwide.

Caroline Valle

Safenames Ltd

This article first appeared in World Trademark Review. For additional data please go to


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