Appearance and evocation of designations of origin: CJEU judgment in the Morbier case

In its judgment of December 17, 2020 in case C-490/19, the Court of Justice of the European Union (“CJEU”) specified the scope of protection that the applicable regulations provide to a product under a protected designation of origin (“PDO”). It specifically determined whether this includes a product’s presentation that may mislead the consumer as to its true origin, even when the third party has not used the PDO in question.

Background

The preliminary ruling answers a question that arose from the dispute between the Syndicat interprofessionnel de défense du fromage Morbier (the “Syndicat”), control authority of the Morbier DPO, and Société Fromagère du Livradois SAS (the “Société”) in France due to the latter marketing a cheese with the visual appearance of the product protected by the Morbier PDO, without meeting the specifications of the PDO. In the Syndicat’s opinion, this conduct constituted an infringement of the PDO and unfair and “parasitic” competition.

• The Syndicat claims that a PDO is protected against any practice that could mislead the consumer as to the true origin of the product in question, which does not only include using the name of the PDO. In this case, it believes that the use of the typical cinder line featured in Morbier cheese misleads the consumer about the product’s true origin.
• The Société, on the other hand, rejects the Syndicat’s submissions and maintains that the PDO protects the products of a specific zone, which are the only ones that can use the PDO, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression they are covered by the PDO in question.

In particular, it states that “a practice liable to mislead the consumer” within the meaning of article 13 of Regulation 510/2006 on the protection of geographical indications and designations of origin (repealed), and also article 13 of the current Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs (the “Regulations”), refers necessarily to the “origin” of the product rather than merely its appearance.

First part of the preliminary ruling

The Paris Court of Appeal asks the CJEU, first, whether article 13 of the Regulations only prohibits the use of the registered name by a third party.

The judgment rejects this interpretation.

To answer this question, the CJEU first recalls the literal wording of article 13 of the respective Regulations, which protects PDOs against different actions. It then establishes that this article does not suggest that the protection granted by a PDO must be exclusively limited to its name.

Those articles protect against:

• Any direct or indirect commercial use of a PDO.

In the CJEU’s view, article 13.1(a) is the only section that prohibits the direct or indirect use of a PDO for products not covered by the registration in an identical or highly similar form.

• Any misuse, imitation or evocation of a PDO.

The CJEU reminds us that this section refers to acts not directly or indirectly using the name of the PDO but that evoke products protected by the PDO in question in the mind of the consumer.

It is not the first time the CJEU has been called to rule on the scope of protection of PDOs and, in particular, on the concept of evocation. The CJEU cites its judgment of May 2, 2019 (c-615/17), Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, which we discussed in this blog post. In it, the CJEU established that a PDO can be evoked using figurative signs (specifically, the characters from the novel “Don Quixote de La Mancha”) that, given their conceptual proximity to a particular PDO (the Manchego Cheese PDO), may bring to the consumer’s mind the products protected by the PDO in question.

• Any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product.

Article 13.1(c) of the Regulations includes “any other indication” that may appear in a variety of ways on the inner or outer packaging or advertising material of a particular product, thus extending the PDO’s scope of protection.

• Any other practice liable to mislead the consumer as to the true origin of the product.

Finally, in line with the AG’s conclusions, the CJEU establishes that the expression “any other practice” protects against any other act not included in the previous sections, thus tightening the system of protection for PDOs.

Second part of the question referred for a preliminary ruling

Based on this, the judgment examines the second part of the question referred for a preliminary ruling, namely whether reproducing the shape or appearance characteristic of a product covered by a PDO may mislead the consumer as to the true origin of the product and constitutes an infringement of that PDO, within the meaning of article 13 of the Regulations, even when it is not used.

The judgment states that it may mislead the consumer.

To answer this part of the question, the CJEU first recalls the objectives of the PDO protection system, namely, to assure consumers that agricultural products protected by a PDO have specific characteristics because of their provenance from a particular geographical area and, accordingly, offer a guarantee of quality.

These objectives would be thwarted if the expression “any other practice” in section (d) of the disputed provisions did not include the reproduction of the form or appearance of a product covered by a PDO, if it is liable to mislead the consumer as to the true origin of the production in question.

To ascertain this possibility, the CJEU states that it is necessary (i) to examine the perception of the average European consumer, who is usually well informed and reasonably observant and discerning; and (ii) to take into account the circumstances of the specific case.

In this case, it concludes that it is necessary to assess whether the appearance of the product constitutes “a baseline characteristic that 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 POD” (section 40 of the judgment).

Authors: Marta Zaballos and Raúl Pérez