THESIS TOPICS

Murad Abasov (Student Number: 613408)

Main Choice: The ever-growing scope of Geographical Indications’ evocation: Is

there any limit on what can result GIs evocation?

Protected Geographical Indications (PGI) and Designations of Origin (PDO) are one
of the European Union (EU) flagships in the intellectual property (IP) world. The EU
legislator has granted to GIs a broad scope of protection, which is less constrained
by means of burdens of proof and limitations than trademarks. On top of that, the
CJEU begun in 1997 a case-specific race to the bottom which have resulted on an
expanded scope of protection of GIs against evocation. This expanded scope is not
comparable to any other EU IP right, nor to GI protection in other jurisdictions.
Although common traits can be found on the CJEU decisional practice, the Court has
not undertaken any effort to systematize an ‘evocation test’ that ensures consistency
among decisions and provides legal certainty. Additionally, the EU extensive
protection over GIs can contradict with that of US. The United States has its own
way of protecting GIs, but it does so, with some exceptions, through trademark law
rather than a dedicated regulatory scheme.

With regards to the above, the research questions of this paper would be:

- Whether the scope of evocation for GIs has gone beyond the aim of the
legislator?
- To what extent the protection against GIs evocation is proportionate?
- How can the ongoing tendency disorder the free competition?
- How can EU deal the question of proportionality: the right to competition and
protection of consumers?
- How can the extension of GIs protectionism affect Transatlantic trade
disputes?

Preliminary sources:

- REGULATION (EU) No 1308/2013 OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 17 December 2013
- REGULATION (EU) No 251/2014 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 26 February 2014
- REGULATION (EC) No 110/2008 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 15 January 2008
- REGULATION (EU) No 1151/2012 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 21 November 2012
- Case C-87/97 Consorzio per la tutela del formaggio Gorgonzola v Ka ̈serei Champignon
Hofmeister GmbH & Co. KG and Eduard Bracharz GmbH [1999] ECLI:EU:C:1999:115
 - Case C-75/15 Viiniverla [2015] ECLI:EU:C:2016:35
- Case C-614/17 Fundacio ́n Consejo Regulador de la Denominacio n ́ de Origen Protegida
Queso Manchego [2019] ECLI:EU:C:2019:344.
- Case C-490/ 19 Syndicat interprofessionnel de de ́fense du fromage Morbier, Conclusions of
AG Pitruzzella [2019] ECLI:EU:C:2020:730
- Case C-132/05 Commission of the European Communities v Federal Republic of Germany
ECLI:EU:C: 2008:117
- Vicente Zafrilla D ́ıaz-Marta and Anastasiia Kyrylenko, ‘The ever-growing scope of
Geographical Indications’ evocation: from Gorgonzola to Morbier’ (2021) 16 Journal of
Intellectual Property Law & Practice 442
- Vito Rubino, ‘From “Cambozola” to “Toscoro”: The Difficult Distinction between “Evocation” of
a Protected Geographical Indication, “Product Affinity” and Misleading Commercial Practices’
(2017) 12 European Food and Feed Law Review 326

- K. William Watson, ‘ Reign of Terroir: How to Resist Europe's Efforts to Control Common
Food Names as GeographicalIndications’ (2016) 787 CATO Institute Policy Analysis 1

- D. Peter Harvey, 'Geographical Indications: The United States' Perspective' (2017) 107
Trademark Rep 960

Second Choice: Trademark protection in digital environment.

The Internet has initiated a new stage in the internationalization of trade. With a
minimum of financial and logistical expenditure, any company is able to advertise its
goods and services worldwide, but also involve considerable legal risks. Hitherto, the
most frequent cause of legal disputes on the Internet has been the infringement of
trademark rights. Law systems have to deal with the existence of this new, on state
borders independent entity. In the perspective of law, internet is interesting because
of its inability as a virtual space, to fit in the doctrine of legal state, by which the state
exercises its authority and enforces its law on its territory. With regards to the above,
the research questions of this paper would be:

 What is the infringement of trademark rights in cyberspace?

 What are the ways of protection and enforcement of rights to trademark?
 Who should attend as a claimant in trademark disputes?
 Which jurisdiction has a competence over a trademark dispute arising in
internet to ensure both the effective enforcement of trademark law online and
sufficient protection of legitimate interests of users?
Preliminary sources:

- Playboy Enterprises v. Chuckleberry Publishing Inc., 39 USPQ 2d 1746 (S.D.N.Y.1996).

- Nanterre Court of Appeals, October 13, 1996 - SG 2 v. Brokat Informationssysteme GmbH.
- Bensusan Restaurant Corp. v. King, 937 F.Supp. 259, 299 (S.D.N.Y. September 9, 1996): the
decision has now been confirmed on appeal (United States Court ofAppeals No. 1383,
Docket No. 96-9344, September 10,1997).
- Akehurst, M. (1972). Jurisdiction in International Law. British Yearbook of International
Law,46(145), 145–257.
- Johnson, D., Post, D. (1996). Law and Borders – The Rise of Law in Cyberspace. Stanford
LawReview. Stanford University School of Law, 48(1), 1367–1402.
- Wang, F. F. (2010). Internet jurisdiction and choice of law: legal practices in the EU, US and
China. Cambridge: Cambridge University Press.
- Xuan-Thao N Nguyen, 'The Digital Trademark Right: A Troubling New Extraterritorial Reach
of United States Law' (2003) 81 NC L Rev 483
- Marshall A Leaffer, 'The New World of International Trademark Law' (1998) 2 Marq Intell Prop
L Rev 1
- Sung In, 'Death of a Trademark: Genericide in the Digital Age' (2002) 21 Rev Litig 159