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Always judge a cheese by its cover

February 01, 2021 - case_law_comment

The Court of Justice rules on the application of PGIs and PDOs to the appearance of a product.


Stefan Martin, Member of the Second Board of Appeal

The views and opinions set out in this article do not represent the views and opinions of the EUIPO, but are the personal views and opinions of the author.

‘Judge a cheese by its cover’, says the Court of Justice.

On 17 December 2020 the Court of Justice handed down its decision in the Morbier case. The Court stated that the scope of protection of a PGI/PDO is not limited to its name but may, in certain circumstances, cover the shape and the appearance of the product.

17/12/2020, C‑490/19, Morbier, EU:C:2020:1043

Facts

Morbier is a cheese made from raw cow’s milk which is produced in the Jura mountains in the eastern part of France. The cheese has a continuous, joined, horizontal, central black seam which is reminiscent of the traditional process developed in the nineteenth century when farmers would cover the remaining curd with ash overnight to protect from dust and insects, then top it up with the first milk of the morning.

 

 

Morbier cheese was registered as an ‘appellation d’origine contrôlée’ (‘registered designation of origin’) by a decree issued on 22 December 2000. Article 8 of the decree provided for a transition period ending on 11 July 2007 for undertakings situated outside the designated geographical area that produced and marketed cheeses under the name ‘Morbier’. At an EU level, ‘Morbier’ was registered as a PDO on 10 July 2002. The defendant, Société Fromagère du Livradois, which has produced Morbier cheese since 1979, is not situated within the geographical area reserved for the name ‘Morbier’. Following the expiration of the transition period, the defendant adopted a new name for its cheese (Montboissie du Haut Livradois) but kept the appearance of the product, including the distinctive black line. In 2013, the Syndicat interprofessionnel de défense du fromage Morbier (‘the Syndicat’), a professional body in charge of the defence of the PDO, brought an action against the Société Fromagère du Livradois. The TGI de Paris (Court of First Instance) dismissed the action on 14 April 2016. The judgment was confirmed by the Cour d’appel de Paris (Paris Court of Appeal). The Court of Appeal essentially stated that the protection of a PDO/PGI does not extend to the appearance or features of a product but is limited to the name and therefore does not prohibit the use of a black line in the middle of a cheese. The Syndicat appealed on a point of law. By a judgment rendered on 19 June 2019 the French Supreme Court sought guidance from the Court of Justice.

Analysis

  1. Does Article 13(1) of Regulation No 1151/2012 prohibit solely the use by a third party of the registered name of a PGI/PDO?

    In the queso manchego case, the Court extended the concept of evocation to figurative elements (02/05/2019, C‑614/17, queso manchego, EU:C:2019:344, § 18). In the present case, the Court completes the review of the provision dealing with the potential conflict between PGIs/PDOs and trade marks by stating that Article 13(c) and (d) is also not limited to the use of the word element(s) of the PGI/PDO. In support of this interpretation, the Court notes firstly that Article 13(1) contains a graduated list of prohibited conducts which are not limited to the sole use of the word elements and secondly that the use of the expressions ‘any other false or misleading indication’ (Article 13(1)(c)) and ‘any other practice liable to mislead the consumer’ (Article 13(1)(d)) reflects the legislator’s intention ‘to cover any conduct not already covered by the other provisions of those articles and thus to tighten the system of protection for registered names’ (§ 30-31).
     
  2. Do Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 cover the shape and the appearance of a product?

    The Court notes that ‘the protection provided for by those provisions concerns, according to the wording of those provisions, the registered name and not the product covered by that name. It follows that 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, on the ground that they appear in that specification, in the making of another product not covered by the registration’ (§ 36). This conclusion would a priori exclude the protection of the shape of the product. The Court overcomes this objection by observing that, by definition, a PGI/PDO and the product that it covers ‘are closely linked’ since the name identifies a product that ‘has certain qualities or characteristics’ (§ 37). As a result, it cannot be excluded that the shape or appearance of a product which is particularly distinctive may mislead the consumer (who is reasonably well informed and reasonably observant and circumspect) as to the true origin of the product in question (§ 38).

Practical significance

The judgment of the Court marks the latest chapter of a flourishing body of case-law on the scope of protection of PGIs/PDOs, which is not limited to their word elements but also encompasses other figurative elements or shapes that are the corollaries thereto. The judgment illustrates once again the willingness of the Court, given the clear objectives of the relevant legislation, to implement far-reaching protection for PGIs/PDOs

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