Indication of origin and trademark: consumers must not be misled

11 May 2023
Corinne Thiérache

The growing interest of consumers in quality products, with a lower environmental impact than other products from far away origin, has reinforced their desire to know more about the origin of the products they buy.

The legal tools that allow consumers to identify the origin of products and services offered by a company are extremely valuable for economic stakeholders. Indeed, such markers of origin guarantee the quality, reputation or characteristics of the product or service. In this matter, there are many mentions or labels that promote the origin of products or services, among which geographical indications and trademarks being the distinctive signs most used by companies.

However, these distinctive signs which help guide the consumer’s choice must not be used to mislead them about the origin of the products.

For example, recently, the emblematic chocolate TOBLERONE, was forced, under Swiss law, to change the Swiss visual identity of its brand because of the relocation of part of the chocolate production to Bratislava, Slovakia, from autumn 2023.

As a matter of fact, TOBLERONE chocolate was made in 1908 by Swiss artisans Theodore Tobler and Emil Baumann in Bern, the capital city of Switzerland. As a purely local product, the branding of TOBLERONE chocolate combines references to the country by depicting the Matterhorn Mountain and Bern’s heraldic animal, a bear, on the packaging. To this end, the international trademark “TOBLERONE” No. 1 533 540, filed in 2019, protects the packaging of its product on which, among other things, the said Swiss symbols appear. However, since 2017, Switzerland has strengthened its legislation on indications of origin in order to maintain the credibility of the label, to protect the country’s reputation and to not mislead the consumer. According to the so-called Swisness legislation, for a food product to be designated as “Swiss made”, at least 80% of the weight of the raw materials used must come from Switzerland. Consequently, the manufacture of TOBLERONE chocolate relocated in Slovakia no longer meets the conditions set by the Swiss law. As a result, the company can no longer use the Swiss national symbols, and has been forced to remove the emblematic Matterhorn Mountain from its visual identity by adapting its branding. Thus, a new international trademark “TOBLERONE” n°1 656 039 was registered at the beginning of 2022, using the generic image of a mountain this time.

As for France, the “made in France” label, which guarantees, in particular, luxurious savoir-faire and favourable working conditions for employees, is also regulated by the Consumer Code. Thus, in order to be able to bear the label “made in France”, a significant part of the product’s value must derive from one or more manufacturing steps located in France and its last substantial transformation must have occurred in France.

In addition to the different legislations that regulate indications of origin, intellectual property rights sanction a trademark that misleads the consumer, in particular as to the nature, quality or geographical origin of the product or service. As a result, the trademark will no longer fulfil its function as a guarantee of origin for the consumer, which may affect its economic behaviour.

Therefore, if, at the time of filing, the trademark is likely to mislead the consumer, it will be qualified as misleading (article L.711-2 of the French Intellectual Property Code). The French Intellectual Property Office or any third party may raise the invalidity of the trademark at the time of its registration or during a dispute. If the trademark is validly registered, but it is during its existence that it becomes deceptive, a third party may raise the revocation of the trademark in the context of infringement litigation, in particular by a counterclaim as a defensive strategy (Article L.714-6(b)) of the French Intellectual Property Code). A trademark is, for example, considered deceptive when it includes a geographical element that no longer corresponds to the origin of the goods.

When considering changes in commercial policy, in particular with respect to the place of manufacture of goods, it is necessary for each company owning intellectual property rights to ensure the integrity of its trademark in order to avoid the invalidity or revocation of rights.

Alerion’s lawyers in the IP/IT/Privacy Departments regularly assist their clients in all matters related to intellectual property, including the development of a trademark portfolio management strategy.

Corinne Thiérache, Partner, and Hanna Le Derrien, legal trainee