In early January 2025, the District Court of Cologne (Germany) granted an interim injunction against Aldi Süd, prohibiting the sale of Alyan ‘Dubai Chocolate’ produced in Turkey (see here). This decision is based on the argument that the name implies a geographical origin that does not align with the product’s actual origin. Such use would violate Sections 127 and 126 of the MarkenG, which state that geographical indications (GIs) must not be applied to products that do not possess the claimed origin.
The rationale for the strict application of Sections 126 and 127 MarkenG is that trade marks serve as a badge of origin, and consumers ought not to be misled regarding the geographical origin of a product by the incorrect use of a mark. The protection provided by trade mark law helps to safeguard the unique qualities of a product associated with a specific location, thereby preserving its authenticity and integrity. It also helps combat counterfeiting and can provide consumers with a minimum guarantee of product quality.
In contrast, the District Court of Frankfurt am Main (Germany) recently adopted an opposing viewpoint. They ruled that the term ’Dubai Chocolate’ has become a widely used generic term to describe a pistachio-knafeh-style confectionery bar and rejected an interim injunction application against Lidl (see here).
Alongside ongoing appeals, the German confectionery trade body BDSI, which represents the economic interests of predominantly medium-sized companies in the German confectionery industry, has clarified its interpretation of the term ‘Dubai Chocolate’ as referring to a type of milk chocolate characterised by a filling of kadayif dough threads (‘angel hair’) and pistachio cream (see here).
In Cloppenburg, the General Court ruled that to determine if a sign is descriptive or a GI, its status should be evaluated in relation to the particular class of goods and the perception of those who engage with these products. This approach is consistent with the Chiemsee ruling, where the Court of Justice of the EU emphasised the need to assess the relevant group with the geographic name and its corresponding products. In the Advocate General’s opinion, he stated that when considering the ‘mind of the general public’ in determining whether the mark should enjoy GI status, such public also includes ‘traders and undertakings selling similar products, as well as manufacturers of such products’.
The importance of including traders and producers in the assessment of ‘public’ was evident in the ruling of Procordia (a case examining distinctiveness), where the CJEU stated that ‘depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trademark, must also be taken into consideration.’
The large number of combination trade marks protected by the EUIPO, which also include a brand name alongside ‘Dubai Chocolate’, and the BDSI’s statement suggest that the industry perceives the mark as a category of goods rather than a geographical indication.
It is arguably difficult to gauge consumer perception without a survey; however, rising demand and varied suppliers outside the UAE have led to consumer recognition of ‘Dubai Chocolate’ as a product category similar to Vienna Sausages. The original ‘Dubai Chocolate’ created by Fix was called ‘Can’t Get Knafeh of It’ and was limited to online orders and delivery within Dubai only (see here).
However, the product’s rapid rise in popularity resulted in a proliferation of global producers and suppliers dubbing it ‘Dubai Chocolate’. The widespread availability of the product may have caused the mark to be used descriptively as an indication of product type rather than commercial origin when sold abroad by other producers like Worcestershire sauce.
This scenario resembles the post-war surge in demand for Camembert cheese, during which consumers began to perceive it merely as a type of cheese rather than associating it with its specific origin. This was due to the various production sources that emerged to satisfy the demands of soldiers seeking the product (IPKat here).
Overall, industry preferences and a diluted understanding of the phrase may assist Aldi and Lidl in meeting the Chiemsee standards for recognising the term as a product type rather than a GI.
Finally, it is essential to note that the UAE is not a signatory to the Geneva Act of the Lisbon Agreement, which protects geographical indications. The dilution of GI could have been avoided if measures similar to those implemented by the Parmigiano-Reggiano Consorzio had been established. Recognising the threats to GI status, the producers united in 1901 to create a consortium that would certify and define export standards (see here). This initiative restricted production to the designated region and standardised terminology. No consortium rules or standards need to be met to produce or sell the product in the UAE. It appears that neither Dubai nor its producers mind that the phrase is used to sell the product abroad.
Just a little more on it….
As a resident of Dubai, I can confirm with reasonable certainty that the phrase originated from popular confectioneries creating their own version of the original Fix chocolate at a lower price and referring to it as ‘Dubai Chocolate’ as a common identifier for foreign buyers. The terms ‘Knafeh Chocolate’ and ’Dubai Chocolate’ have been used interchangeably in reference to the product type, knowing that Knafeh, the main ingredient in this product, is a popular Middle Eastern dish that can originate from anywhere in the region.
The picture is by Amine and used under the licensing terms of Pexels.com.