The protection granted by a PDO may extend to the shape of a product, says the CJEU

With the judgement in Case C-490/19 the CJEU ruled on the interpretation of Article 13, paragraph 1, of the EU Regulation no. 1151/2012 on quality schemes for agricultural products and foodstuffs, regarding the infringement of a protected designation of origin (PDO).

The case in question arose from the dispute between the Syndicat interprofessionnel de défense du fromage Morbier (the “Syndicat”) and the Société Fromagère du Livradois SAS, concerning the alleged infringement by the latter of the PDO “Morbier”, which protects a particular French cheese produced in the Jura mountains. The Cheese in question has enjoyed an appellation d’origine contrôlée (AOC) status since the adoption of the Decree of 22 December 2000 relating to the registered designation of origin ‘Morbier’. This decree allowed for a five-year transitional period, from the publication of the registration of the designation “Morbier” as a PDO, which enabled producers situated outside the geographical reference area to continue to use the name “Morbier” without the AOC reference, until the expiry of this period.

In this context, Société Fromagère du Livradois was authorised to use “Morbier” until 11 July 2007. After that date, this name was replaced with the name “Montboissié du Haut Livradois”. 

In 2013, however, the Syndicat, contesting that the cheese at issue had the same visual appearance of the “Morbier” (in particular, the black mark throughout each slice), accused the Société Fromagère du Livradois of infringing the PDO and committing acts of unfair and parasitic competition, despite the name change.

The Court of Paris dismissed the application stating that the marketing of a product which has one or more features contained in a PDO’s specification is permitted, since «the PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name».

The Court of Appeal of Paris upheld the first instance decision, thus the Syndicat appealed the judgement before the Court of Cassation arguing that a PDO is protected against any practice liable to mislead the consumer as to the true origin of the product. The Court of Cassation decided to stay the proceedings and refer a request to the CJEU for a preliminary ruling concerning the interpretation of Article 13, paragraph 1, of the EU Regulation no. 1151/2012; in particular, the referring Court asked whether the article in question «must be interpreted as prohibiting only the use by a third party of the registered name or whether it must be interpreted as also prohibiting any presentation of the product which is liable to mislead the consumer as to its true origin, even if the registered name has not been used by the third party».  

In this respect, the CJEU noted that the wording of Article 13, paragraph 1, of the Regulation indicates that the registered names are protected against various acts. Firstly, Article 13, paragraph 1 (a), prohibits the direct or indirect use of a registered name for products not covered by the registration, in a form that is identical or extremely similar from a phonetic or visual point of view. Furthermore, the letters (b), (c) and (d) of  Article 13 prohibit other types of conduct against which registered names are protected and which do not use the names themselves either directly or indirectly; pursuant to these provisions, for example, the concept of “evocation” of a registered name or the wording “any other practice” referred to in letter (d) are intended to cover any conduct not already covered by the other provisions of Article 13, paragraph 1. Consequently, the CJEU concluded that Article 13, paragraph 1, of the Regulation is not limited to prohibiting the use of the registered name itself, but it has a wider scope.

Having said that, the CJEU examined the question whether even the reproduction of the shape or visual characteristic of a product covered by a registered name can be included among the conducts prohibited by Article 13, paragraph 1 (d), of the Regulation. In particular, according to this provision, a registered name is protected against «any other practice liable to mislead the consumer as to the true origin of the product». In this respect, the CJEU clarified that the protection provided for by Article 13 concerns the registered name and not the product covered by that name. Consequently, «the purpose of that protection is not to prohibit, inter alia, the use of manufacturing techniques or the reproduction of one or more characteristics indicated in the specification of a product covered by a registered name». Nevertheless, the CJEU continued, a PDO identifies a product originating in a specific place, whose qualities or characteristics are essentially due to it belonging to a geographical area and to its natural and human features. Therefore, PDOs are «protected as they designate a product that has certain qualities or characteristics. Thus, the PDO and the product covered by it are closely linked».

In light of this close link, according to the CJEU, it cannot be excluded that the reproduction of a shape or appearance of a product covered by a registered name may fall within the scope of Article 13, paragraph 1 (d) of the Regulation, without that name appearing either on the product in question or on its packaging. This occurs when the reproduction is liable to mislead the consumer as to the true origin of the product. In this regard, it will be necessary to refer to the average consumers’ perception, taking into account the way in which the products are presented to the public and any other particular circumstance.   

Finally, Article 13, paragraph 1, of the EU Regulation no. 1151/2012 must be interpreted as meaning that it does not solely prohibit the use by a third party of a registered name; Article 13, paragraph 1 (d), must therefore be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. However, it is necessary to assess whether such reproduction may mislead the European consumer, who is normally informed and reasonably observant and circumspect, taking into account all relevant factors in the case.

The referring Court shall now rule in accordance with this interpretation of Article 13, paragraph 1, of the EU Regulation no. 1151/2012.