Can a GI owner register a domain name with that GI?

This Kat has come across a curious case (curious even for a Kat) on the use of a geographical indication (GI) in a domain name by a producer, which is part of that GI producers’ association. The case concerned the use of “Piment D’Espelette” and it was recently decided by the Paris First Instance Court (22/11181).

“Piment D’Espelette” (Espelette pepper) is a protected denomination of origin (PDO) from the French Basque Country since 2002. The Syndicate of producers of Espelette pepper controls the quality of produce. It then issues to those local producers, whose pepper is compliant with the PDO’s requirements, a certificate that allows them to market their products under the PDO “Piment D’Espelette”.

The defendant, an unidentified producer from that region, owns a pepper company called Biperduna, in operation since 2001. Despite the events that took place, in 2018-2019, as described below, the defendant currently has the approval of the Syndicate for 2020 to 2023.

So what happened earlier? The defendant’s harvest of 2018-2019 had been deemed as not in compliance with the PDO norms, such that it was not authorized to be marketed at that time under the PDO “Piment D’Espelette”.

As such, in 2018, the French GI Institute (INAO) and the Syndicate of producers sued the defendant in the local court of Bayonne. The plaintiffs demanded that the defendant cease using the domain name “www.piment-espelette.info” because its product was non-compliant with the PDO norms.

They also argued that the defendant was using the PDO’s logo, as well as terms such as “variety” or “type”, to indicate that its non-PDO-compliant pepper is a variety of the “Piment D’Espelette”. INAO and the Syndicate prevailed, but the defendant never complied with the ruling.

In 2022 (when, it transpires, the defendant was producing PDO-compliant peppers), INAO and the Syndicate applied to the Paris First Instance Court for the execution of the earlier ruling. The defendant argued that after the renewal of the compliance certificate in 2020 it was entitled to use the domain name.

The Court sided with the plaintiffs. It first analysed the contents of the website from 2019. Indeed, the defendant was marketing a “pepper variety gorria type espelette”. This is an infringement of Art. 13(1)(b) Regulation (EU) 1151/2012, which prohibits expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar.

The Court then analysed the domain name itself. Interestingly, the Court found that such use was infringing, but not because the defendant had been using it when it was not entitled to the PDO name.

Rather, the use of a domain name that consists of the PDO name and the term “info” (such as “www.piment-espelette.info”) is likely to mislead the consumer by suggesting that it is a general information site relating to that PDO. This is not the case here, since the defendant is only one of the PDO producers.

According to the Court, registering this domain name constitutes a private use contrary to the principle of collective use of the PDO, which belongs to all the authorized producers of the region in question. Such a sign cannot be aggrandized by a single producer, whether PDO-compliant or not. The defendant was ordered to cease the domain name.

This decision comes at a moment when the European Union is reforming the GI system, including GI protection in domain names.

Current legislation does not specifically expand GI protection to uses in domain names. Such use may certainly qualify as “any direct or indirect commercial use […] in respect of products not covered by the registration” of the GI (Art. 13(1)(a) Regulation (EU) 1151/2012). It might also fall under the remainder of Art. 13(1), which protects GIs from misuse, evocation, or other misleading practices.

The Proposal for a new GI Regulation suggests expanding the existing scope of protection to cases where “a domain name contain[s] or consist[s] of the registered geographical indication” (Art. 27(3). None of these possibilities, however, covers a case, such as the one at hand, where the domain name is registered by an authorised producer.