In a decision of 17 December 2020 (C-490/19, Syndicat interprofessionnel de défense du fromage Morbier), the ECJ reminds everyone to the far reaching protection offered by a Protected Denomination of Origin (PDO) under EU Reg. 1151/2012 on quality schemes for agricultural products and foodstuffs.
The case submitted to the Court concerns the PDO for the French cheese « Morbier ». The specifications of that PDO (i.e. the information about what makes the product different from the other products) mention that « Throughout each slice the cheese has a continuous, joined, horizontal, central black mark ».
(representation of a Morbier)
A cheese manufacturer marketing a cheese containing such « continuous joined horizontal central black mark » is sued by the Syndicat interprofessionnel de défense du fromage Morbier, for infringement of the PDO.
The European Court of Justice is asked whether the PDO protection must be interpreted as prohibiting solely the use by a third party of the name registered as PDO, or whether the protection also covers the other characteristics mentioned in the specifications.
The ECJ notes that it is clear from Regulation 1151/2012 that PDO are protected against various acts listed in article 13.1. (a) to (d) of the Regulation.
Whilst Article 13(1)(a) prohibit direct or indirect use of a registered name for products not covered by the registration, in an identical form or a form that is phonetically and/or visually highly similar, article 13(1)(b) prohibit actions which, do not use either directly or indirectly the protected name itself, but « suggest » it in such a way that it causes the consumer to establish a sufficiently close connection with that name.
As regards, more specifically, the concept of ‘suggestion’, the decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his or her mind is that of the product covered by the PDO (to assess whether this is the case, one must take into account, as the case may be, the partial incorporation of the PDO in the disputed designation, any phonetic and/or visual similarity, or any conceptual proximity, between the designation and the PDO).
Also, the ECJ reminds that article 13(1)(b) means that a registered name may be evoked through the use of figurative signs (ECJ 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego – C‑614/17, EU:C:2019:344) ; that article must therefore be understood as referring not only to words capable of evoking a registered name, but also to any figurative sign capable of evoking products whose designation is protected : figurative signs may indeed trigger directly in the consumer’s mind the image of products whose name is registered on account of their ‘conceptual proximity’ to such a name.
With regard to Article 13(1)(c), the ECJ states that this article widens the scope of the protection, by including, inter alia, ‘any other indication’ on the inner or outer packaging of the product, on advertising material or documents, which, while not actually evoking the PDO, is false or misleading as regards the links between the product concerned and that PDO. ‘Any other indication’ includes information which may appear in any form, in particular in the form of text, pictures or a container likely to provide information on the provenance, origin, nature or essential qualities of that product.
And as regards article 13(1)(d), it prohibits ‘any other practice’ that is misleading ; the ECJ reminds that it is therefore intended to cover any conduct not already covered by the other provisions and thus to tighten the system of protection.
The ECJ concludes that Article 13(1) is not limited to prohibiting the use of the registered name itself, but has a wider scope.
The ECJ however states that the protection provided to a PDO concerns, the registered name and not the product covered by that name : the purpose of the protection is therefore not to prohibit, inter alia, the use of manufacturing techniques or the reproduction of one or more characteristics indicated in the specfication of the product (which must be filed with the application for protection), on the ground that they appear in that specification.
Nevertheless, a PDO is, a name which identifies a product originating in a specific place, whose quality or characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors. PDOs are therefore protected as they designate a product that has certain qualities or characteristics. Thus, the PDO and the product covered by it are closely linked.
Therefore, having regard to the open-ended nature of the expression ‘any other practice’ in Article 13(1)(d), the ECJ states that the possibility remains that the reproduction of the shape or appearance of a product may fall be considered contrary to article 13.1.(d) even if the PDO does not appear either on the product or on its packaging. This will be the case where that reproduction is liable to mislead the consumer as to the true origin of the product in question.
As always with the ECJ, it is up to the national court to assess whether the average European consumer, who is reasonably well informed and reasonably observant and circumspect could be misled, taking into account all the relevant factors in the case, including the way in which the products in question are presented to the public and marketed and the factual context.
When an element of the appearance of the product covered by the PDO is at stake, it is necessary, in particular, to assess whether that element constitutes a baseline characteristic which is particularly distinctive of that product so that its reproduction may, in conjunction with all the relevant factors in the case in point, lead the consumer to believe that the product containing that reproduction is a product covered by that registered name, or not.
Article 13(1)(d) must thus be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a PDO where that reproduction is liable to lead the consumer to believe that the product in question is covered by the DPO and it is necessary to assess whether such reproduction may mislead the European consumer, who is reasonably well informed and reasonably observant and circumspect, taking into account all the relevant factors in the case.
The protection offered to a PDO is therefore not limited to the name, but could extent to any other characteristic of the product protected, when the circumstances of the use makes it that the consumer could be mislead as to the origin of the product.
This decision can be compared with other recent decisions of the Opposition Division and the Board of Appeal of EUIPO concerning the PDO protected under Regulation 1308/2013 on agricultural products, such as « Champagne ». Article 103 of that Regulation contains provisions offering as well a broad protection to PDO for wine.
It is inter alia prohibited to :
- use the PDO for comparable products not complying with the product specification of the PDO ; and use that PDO for non-comparable products insofar as such use exploits the reputation of the PDO.
- Protection is also granted, againt misuse, imitation or “evocation” as it is the case for other PDOs,
In its “Champagnola” decision of 20 April 2020, the Board of Appeal of the EUIPO ruled that there is an infringement of the PDO also when the “evocation” of the PDO is made for “non-comparable” products, if this PDO enjoys a reputation.