Misleading Indication of Origin or Variety Name?
So-called Dubai Chocolate is gaining popularity but is also leading to legal disputes. In a ruling dated January 6, 2025, the Cologne Regional Court determined that Dubai Chocolate must either originate from Dubai or have another geographical connection. Otherwise, it may not be labeled as such or in a similar way, as the court clarified in a preliminary injunction (Case No.: 33 O 525/44).
Consumers associate certain product characteristics with geographical indications of origin. Therefore, they must not be misled by misleading information about a product’s origin, explains the commercial law firm MTR Legal Rechtsanwälte, which provides counsel on trademark law and other areas of intellectual property law.
Dubai Chocolate Must Originate from Dubai
The court found that Dubai Chocolate not produced in Dubai misleads consumers. The plaintiff in the case sells chocolate bars labeled “made in Dubai” via its online store. The plaintiff claimed that the defendant, who also offers multiple products under the name Dubai Chocolate in their online store, violated competition law. The plaintiff argued that the offered chocolate was neither manufactured in Dubai nor had any geographical connection to it.
The lawsuit for injunctive relief was successful before the Cologne Regional Court. In a preliminary injunction, the court ruled that chocolate not manufactured in Dubai and without any geographical link to Dubai may not be marketed as Dubai Chocolate. This also applies to descriptions in German or English, such as “A Touch of Dubai” or “The Taste of Dubai.” Such statements violate Section 127 of the Trademark Act.
Consumer Deception
Under Section 127 of the Trademark Act, geographical indications of origin may not be used in commercial transactions for goods or services that do not originate from the place, region, or country designated by the geographical indication if this could mislead consumers regarding the product’s geographical origin. The Cologne Regional Court ruled that this was the case here. By labeling the product as Dubai Chocolate and using other promotional statements, consumers might assume that the chocolate comes from Dubai or is at least associated with that region.
This impression could be further reinforced by English-language descriptions or product labels on the back of the packaging. Consumers might believe that the product was manufactured in Dubai and imported into Germany. According to the court, even a small-print disclaimer stating that the product comes from Turkey does not eliminate this misconception. The consumer is not clearly informed that the products are imitations of Dubai-made chocolate.
Frankfurt Regional Court Rules Differently
In another preliminary injunction, the Cologne Regional Court also ruled that a discount retailer may no longer sell its Dubai Chocolate (Case No.: 33 O 544/24). This was because the chocolate was actually produced in Turkey, as stated on the back of the packaging. The court again saw a risk of consumer deception. However, the Frankfurt Regional Court ruled differently in a similar case involving another discount retailer (Case No.: 2-06 O 18/25). Here, the product was also marketed as Dubai Chocolate, but with German labeling and clearly as a private label. According to the court, this counteracted any impression that the chocolate originated in Dubai.
The parties still have the opportunity to appeal these decisions. The issue depends on nuances. It is also possible to argue that Dubai Chocolate is a variety designation rather than an indication of origin.
This case highlights the fine legal line concerning geographical indications of origin. Misleading advertising statements or violations of trademark law can lead to cease-and-desist orders and claims for damages.
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