Introduction
Queso Manchego case
Champanillo case

Morbier case
Comment


Introduction

For many years, the European Union has paid particular attention to the protection of protected geographical indications (PGIs) and protected designations of origin (PDOs).

EU Regulation No. 1308/2013, which establishes a "common organisation of the markets in agricultural products" states that:

Registered designations of origin and geographical indications should be protected against uses which take advantage of the reputation enjoyed by complying products. So as to promote fair competition and not to mislead consumers, that protection should also extend to products and services not covered by this Regulation, including those not found in Annex I to the Treaties.

In this vein, trademark law protects PGIs and PDOs by granting them a privileged protection regime that is not based on the risk of confusion. Under this regime, what constitutes infringement of an PGI or PDO is key.

Under article 13(1)(b) of EU Regulations No. 510/2006 and No. 1151/2012, registered names are protected in particular against any usurpation, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as "kind", "type", "method", "manner", "imitation" or a similar expression. While the notions of usurpation and imitation constitute relatively precise cases of infringement, the notion of "evocation" has needed to be clarified in case law.

In recent years, several rulings of the Court of Justice of the European Union (CJEU) have broadened the notion of evocation of a PDO so that its protection no longer appears to be limited to its verbal elements alone or even to products or services similar to the products it covers.

The notion of evocation of the PDO had been defined(1) as the situation in which a part of the PDO is used within a sign designating a product, so that the consumer, in the presence of the name of the product in question, is led to have in mind, as a reference image, the goods benefitting from this indication or designation. It is now known that this definition is not restrictive and cannot be interpreted as laying down conditions that must necessarily be met to constitute the evocation of a PDO.

This evolution in case law is particularly apparent in the following judgments, which show that the evocation of a PDO is not limited to the evocation of its verbal elements, and that its regime is similar in the mind of the examiner to that of the reputed trademark, leading to a particularly broad protection.

Queso Manchego case

Facts
In this case,(2) the Queso Manchego Foundation, which is responsible for managing and protecting the PDO "queso manchego", brought an action before a Spanish court of first instance seeking a declaration that the labels used by the company Industrial Quesera Cuquerella SL (IQC) to market the cheeses Adarga de Oro, Super Rocinante and Rocinante, as well as the use of the term "Quesos Rocinante", constituted an unlawful evocation of the "queso manchego" PDO.

The Spanish court of first instance dismissed the action on the grounds that:

  • the signs and names used by IQC to market cheeses not covered by the PDO "queso manchego" bore no visual or phonetic similarity to the PDO "queso manchego" or "la Mancha"; and
  • the use of signs such as the name "Rocinante" or the image of the literary character Don Quijote de la Mancha evoked the region of La Mancha (Spain) and not the cheese covered by the PDO "queso manchego".

The appeal judgment confirmed the terms of the judgment. The appellant in the main proceedings appealed this judgment to the Spanish Supreme Court, which decided to stay the proceedings and refer three questions for a preliminary ruling. Two of these questions directly defined the contours of the notion of evocation.

Decision
The CJEU's judgment shed important light on the fact that the evocation of the PDO is not limited to the evocation of its verbal elements and that it can be constituted in a more indirect way by the evocation of the geographical area of the PDO.

The first question examined by the CJEU was as follows:

Must evocation of the PDO necessarily occur through the use of verbal elements which are visually, phonetically or conceptually similar to the PDO or can it occur through the use of figurative signs evoking the PDO?

The CJEU replied that the decisive criterion for establishing whether an element evokes the registered name within the meaning of article 13(1)(b) of Regulation No. 510/2006 is whether that element is capable of directly recalling to the mind of the consumer, as a reference image, the product covered by that name.

Therefore, it cannot be excluded, as a matter of principle, that figurative signs are capable of meeting this condition because of their conceptual proximity to the name.

Thus, the evocation of a registered name is likely to be produced by the use of figurative signs and it will be for the national courts to assess in practice whether figurative signs are likely to recall directly to the mind of the consumer the products covered by a registered name.

The second question examined by the CJEU was as follows:

In the case of a PDO of a geographical nature and concerning the same or comparable products, can the use of signs evoking the region to which the PDO is linked be considered as an evocation of the PDO itself, which is unacceptable, even in the case where the user of these signs is a producer established in the region to which the PDO is linked but whose products are not covered by that PDO?

The judge answered that the use of figurative signs evoking the geographical area to which a designation of origin is linked is likely to constitute an evocation of it. This evocation is likely to be characterised even in cases where such figurative signs are used by a producer established in that region, for products not covered by the designation but similar or comparable to those protected.

The judged added that to consider the opposite would be tantamount to allowing the producer to use figurative signs which evoked the geographical area whose name forms part of a designation of origin covering a product identical or similar to that of that producer and, consequently, to allow it to benefit unduly from the reputation of that designation.

With regard to the third question referred for a preliminary ruling, the CJEU was asked whether the relevant consumer should be understood as the European consumer in general or as the consumer of the member state in which the product protected by the PDO is protected and predominantly consumed. The CJEU stated that the relevant consumer for the purposes of evocation is the average European consumer, who is reasonably well informed and reasonably observant and circumspect. However, it specified that this does not prevent the existence of an evocation from being assessed solely in relation to consumers in a single member state (although this has not yet been the case in the case law).

Champanillo case

Facts
In this case,(3) the Comité Interprofessionnel du Vin de Champagne (CIVC) brought an action against the company GB, considering that the use of the sign CHAMPANILLO by the company to designate and promote tapas bars on social networks as well as through advertising leaflets constituted an infringement of the PDO "Champagne".

In the first instance, the Spanish judge considered that the use of the sign CHAMPANILLO by GB did not refer to the PDO "Champagne" because the sign did not refer to champagne but to restaurant services. The Provincial Court of Barcelona asked the CJEU whether the reference to the PDO could be constituted by a name designating products other than those of the PDO.

Decision
The CJEU answered this question in several points, specifying in particular two elements:

  • On the one hand, if the PDO exclusively concerns products, this is not the case for the evocation of the PDO, whose protection covers any use of it, whether by products or services. The CJEU added that considering the opposite would not allow the PDO to be protected correctly since the reputation of a product benefitting from a PDO is also likely to be exploited unduly in the context of services linked to those products.
  • On the other hand, the existence of an evocation is not conditional on the fact that the product benefitting from a PDO and the product or service covered by the contested sign are identical or similar, provided that there is a sufficiently direct and unambiguous link between the contested sign and the PDO. In order to establish this link, account may be taken in particular of the conceptual proximity between the PDO and the name.

In this judgment, the CJEU again tended towards a broad conception of the evocation of the PDO, bringing the regime of infringement of the PDO closer to that of infringement of the reputed trademark, which requires that a link be established in the mind of the consumer.

Morbier case

In view of the extended protection that seems to be given to PDOs by the CJEU, it is legitimate to think that the reasoning adopted in the Morbier judgment could be taken up in the area of evocation. If this is the case, the concept of evocation would also cover the case where the aesthetic characteristics of the product covered by the PDO are reproduced in a product marketed under a different name from the PDO.

In this landmark judgment, the CJEU reused the reasoning developed in the Queso Manchego case and answered the question of whether the infringement of the PDO can be constituted by the reproduction of the physical characteristics of a product covered by a PDO, without using the registered name.

Facts
In this case,(4) the Syndicat interprofessionnel de défense du fromage Morbier, which is responsible for defending the Morbier PDO, accused the Société Fromagère du Livradois of infringing the PDO and committing acts of unfair and parasitic competition by manufacturing and marketing a cheese with the visual appearance of the product covered by the PDO.

This claim was rejected at first instance and by the Paris Court of Appeal. On appeal, the Court of Cassation asked the CJEU the following question:

Are the respective Articles 13(1) of Regulations Nos 510/2006 and 1151/2012 to be interpreted as prohibiting only the use by a third party of the registered name or are they to be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or appearance characterising it, which is likely to mislead the consumer as to the true origin of the product, even if the registered name is not used?

Decision
The CJEU began by recalling the principle that article 13(1) of Regulations No. 510/2006 and No. 1151/2012 do not prohibit only the use by a third party of the registered name. It considered that the article must be interpreted as prohibiting the reproduction of the shape or appearance characterising the product covered by a registered name where such reproduction is likely to lead the consumer to believe that the product in question is covered by the PDO. It states that it is necessary to assess whether that 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.

While in this case the legal issue was whether the reproduction of characteristics of a product protected by a PDO can constitute a practice liable to mislead the consumer as to the true origin of the product, the CJEU's reasoning, which was very similar to that in Queso Manchego, suggests that this could easily constitute an evocation of the PDO.

Comment

It seems that the CJEU has a very broad conception of the notion of evocation without it being possible, within the texts, to identify the imperative conditions to be met in order to constitute an evocation of the PDO. The essential requirement for the CJEU is that the consumer establishes a link between the term used or the figurative elements used to designate the product in question and the protected geographical indication, without any other restrictive condition.

For further information on this topic please contact Mélanie Villanova or Férielle Metekalerd at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected] or [email protected]). The INLEX IP Expertise website can be accessed at inlex.com.

This article was published in the Revue Francophone de la Propriété Intellectuelle - Issue 15 (August 2022).

Endnotes

(1) CJEU, 7 June 2018, C-44/17, Scotch Whisky Association, EU:C:2018:415.

(2) CJUE, 2 May 2019, C‑614/17, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, EU:C:2019:344.

(3) CJUE, 9 September 2021, C-783/19, Comité Interprofessionnel du Vin de Champagne, EU:C:2021:713.

(4) CJUE, 17 December 2020, C‑490/19, Syndicat interprofessionnel de défense du fromage Morbier, EU:C:2020:1043.