EUCJ, C‑614/17: a PDO can be infringed by images that evoke it suggestively

With a decision dated 2 May 2019, the European Court of Justice (C-614/17) ruled on three preliminary questions raised by the Tribunal Supremo (the Spanish Supreme Court), concerning the interpretation of Article 13(1)(b) of Regulation EC no. 2006/510 in the matter of protection of designations of origin (PDOs) against unlawful evocations. In particular, the Court clarified whether the use of images and names referring to the geographical area connected to a protected designation may constitute an infringement of the PDO itself, pursuant to the aforementioned Regulation.

The dispute concerned the protected designation of origin «queso manchego» which identifies and protects the cheeses produced in the Spanish region ‘La Mancha’, obtained from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of the PDO. In particular, the ‘Queso Manchego’ Foundation – the organisation that manages and protects the PDO – sued the Spanish company Industrial Quesera Cuquerella (‘IQC’) for the unauthorized use on its products of labels bearing images and names which, it alleged, evoked the registered name ‘queso manchego’ in the consumer’s mind (see the two examples below). The Foundation sought a declaratory ruling that the labels used by the defendant to identify and market its cheeses ‘Adarga de Oro’, ‘Super Rocinante’, ‘Rocinante’ and ‘Quesos Rocinante’ were an unlawful evocation of the PDO.

Following the lawsuit’s rejection and the upholding of the ruling by the second instance court, the Foundation appealed before the Tribunal Supremo.

With reference to the ‘Adarga de Oro’ cheese produced by IQC (see the picture above), the Spanish Supreme Court observed that the subject depicted in the related labels recalled – in its physical and clothing characteristics – the well-known character Don Quixote of Mancha, protagonist of the homonymous novel mainly set in the Spanish region to which the PDO is connected. The Judge also highlighted that the term ‘adarga’ (which means ‘small leather shield’) is used in the same novel to indicate the shield worn by the protagonist. Moreover, the term ‘Rocinante’ used by IQC for some of its cheeses matched the name of Don Quixote’s horse. Lastly, different IQC cheeses’ labels depicted landscapes with sheep and windmills, which are typical elements against which the character fights, as well as typical elements of a ‘manchego’ landscape. In the light of these premises, the Tribunal Supremo raised three preliminary questions.

With the first preliminary question, the Judge asked if Article 13(1)(b) of Regulation CE no. 2006/510 – which states ‘Registered names shall be protected against any misuse, imitation or evocation’ – must be interpreted as meaning that the unlawful evocation of a registered name may derive from the use of figurative signs. In this regard, the Court observed that the use of the word ‘any’ reflects the EU legislature’s intention to grant PDOs the widest protection and that ‘it cannot be excluded, in principle, that figurative signs may 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’. In this context, the decisive criterion to ascertain the infringement of the PDO is to assess whether, by means of a figurative evocation, the image directly triggered in the consumer’s mind is that of the product whose geographical indication is protected.

With the second preliminary question, the referring Judge asked whether the aforementioned Regulation should be interpreted as meaning that the unlawful evocation of a PDO by means of figurative signs may occur also in the case it is carried out by a producer situated in the geographical area connected to the PDO, and whose products – similar or comparable with those protected by the registered name – are not covered by the latter. In this regard, the Court of Justice found that the wording of Article 13 does not provide for any exemption such as the one indicated by the referring Court, which would, besides, allow the producer to take unfair advantage of the reputation of the designation. In any case, the ECJ stated, it is up to the Tribunal Supremo to assess whether there is sufficiently clear and direct conceptual proximity between the figurative signs at issue and the PDO ‘queso manchego’, capable of arousing in the consumer’s mind a direct connection with the products protected by the registered name ‘queso manchego’ through the reference to the geographical region of La Mancha.

Lastly, with the third preliminary question, the Court was asked to clarify whether the notion of ‘average consumer who is reasonably well informed and reasonably observant and circumspect’, to which reference must be made in order to assess the existence of an unlawful evocation, can cover European consumers or only consumers of the Member State in which the product giving rise to the evocation of the protected geographical indication is produced, or with which the PDO is geographically associated and in which the product is mainly consumed. In reply, the ECJ pointed out that the aforesaid Article 13 must be interpreted in a way that guarantees effective and uniform protection of registered names against any evocation throughout the entire territory of the European Union. The Court therefore concluded that, in order to assess the infringement of a PDO, it is sufficient that an unlawful evocation is found with reference to the perception of a consumer of even a single Member State.

Given these clarifications on the interpretation of Article 13, it will now be up to the Spanish judge to assess whether this interpretation implies the infringement of the PDO at issue.