EN
L 271/20
Official Journal of the European Union
24.10.2019
Article 10
Protection Under Laws of Contracting Parties or Other Instruments
(1) [Form of Legal Protection] Each Contracting Party shall be free to choose the type of legislation under which it
establishes the protection stipulated in this Act, provided that such legislation meets the substantive requirements
of this Act.
(2) [Protection Under Other Instruments] The provisions of this Act shall not in any way affect any other protection
a Contracting Party may accord in respect of registered appellations of origin or registered geographical indica
tions under its national or regional legislation, or under other international instruments.
(3) [Relation to Other Instruments] Nothing in this Act shall derogate from any obligations that Contracting Parties have
to each other under any other international instruments, nor shall it prejudice any rights that a Contracting Party
has under any other international instruments.
Article 11
Protection in Respect of Registered Appellations of Origin and Geographical Indications
(1) [Content of Protection] Subject to the provisions of this Act, in respect of a registered appellation of origin or
a registered geographical indication, each Contracting Party shall provide the legal means to prevent:
a) use of the appellation of origin or the geographical indication
(i.) in respect of goods of the same kind as those to which the appellation of origin or the geographical
indication applies, not originating in the geographical area of origin or not complying with any other
applicable requirements for using the appellation of origin or the geographical indication;
(ii.) in respect of goods that are not of the same kind as those to which the appellation of origin or geograph
ical indication applies or services, if such use would indicate or suggest a connection between those goods
or services and the beneficiaries of the appellation of origin or the geographical indication, and would be
likely to damage their interests, or, where applicable, because of the reputation of the appellation of origin
or geographical indication in the Contracting Party concerned, such use would be likely to impair or
dilute in an unfair manner, or take unfair advantage of, that reputation;
b) any other practice liable to mislead consumers as to the true origin, provenance or nature of the goods.
(2) [Content of Protection in Respect of Certain Uses] Paragraph (1)(a) shall also apply to use of the appellation of origin
or geographical indication amounting to its imitation, even if the true origin of the goods is indicated, or if the
appellation of origin or the geographical indication is used in translated form or is accompanied by terms such as
‘style’, ‘kind’, ‘type’, ‘make’, ‘imitation’, ‘method’, ‘as produced in’, ‘like’, ‘similar’ or the like (1).
(3) [Use in a Trademark] Without prejudice to Article 13(1), a Contracting Party shall, ex officio if its legislation so
permits or at the request of an interested party, refuse or invalidate the registration of a later trademark if use of
the trademark would result in one of the situations covered by paragraph (1).
Article 12
Protection Against Becoming Generic
Subject to the provisions of this Act, registered appellations of origin and registered geographical indications cannot be
considered to have become generic (2) in a Contracting Party.
(1) Agreed Statement concerning Article 11(2): For the purposes of this Act, it is understood that where certain elements of the denomi
nation or indication constituting the appellation of origin or geographical indication have a generic character in the Contracting Party
of Origin, their protection under this paragraph shall not be required in the other Contracting Parties. For greater certainty, a refusal
or invalidation of a trademark, or a finding of infringement, in the Contracting Parties under the terms of Article 11 cannot be based
on the component that has a generic character.
(2) Agreed Statement concerning Article 12: For the purposes of this Act, it is understood that Article 12 is without prejudice to the
application of the provisions of this Act concerning prior use, as, prior to international registration, the denomination or indication
constituting the appellation of origin or geographical indication may already, in whole or in part, be generic in a Contracting Party
other than the Contracting Party of Origin, for example, because the denomination or indication, or part of it, is identical with a term
customary in common language as the common name of a good or service in such Contracting Party, or is identical with the custom
ary name of a grape variety in such Contracting Party.