Analysis: “Court of Justice: protected geographic indications and designation of origin prohibit the use of a characteristic shape or appearance of a product covered by a registered name” by Bernd Justin Jütte
In Syndicat interprofessionnel de défense du fromage Morbier (C-490/19) the Court of Justice of the European Union interprets the scope of protection of designations of origin and geographical indications to cover not only the registered name, but also the shape or appearance or characteristic of the relevant product. Protected geographical indications (PGI) and protected designations of origins (PDO) provide help to inform consumers of certain characteristics (such as origin and mode of manufacturing) of, amongst others, agricultural products and foodstuffs.
At EU level the rules on PDOs and PGOs are harmonised by Regulation (EU) No 1151/2012. The use of names protected as a designation or indication can be used by any person as long as the product marketed under that name complies with the relevant specification as stated in the registration. Article 13(1) provides that a registered name protects against the (a) ‘direct or indirect commercial use of a registered name’ in relation to comparable products that do not comply with the specifications or to exploit the reputation of the registered name and (d) ‘any other practice liable to mislead the consumer as to the true origin of the product’.
The Court argues that the object and purpose of the Regulation is to provide consumers with clear information as to the origin and properties of the project for which a PGO or PDO has been registered. This protection, which serves as a guarantee of quality based on the provenance of the relevant product, should reward agricultural producers who comply with the specification under the protected name.
In principle, producers that do not comply with the registered specification (because they produce in a region not covered by the registration) cannot be barred from producing similar products, as long as they do not use the registered name for their products. In addition, third parties are also prevented from using other figurative signs or any other indication that may evoke the name registered name (Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, C-614/17). The reproduction of the traditional form and shape, as well as other characteristics can fall within the scope of protection of Article 13(1) if the reproduction is liable to mislead consumers, even without using the registered name.
Whether this is the case must be determined by the national court with reference to the perception of the average consumer taking into account, inter alia, how the relevant product is marketed. The reproduction of the appearance of a product is liable to constitute ‘any other practice’ within the meaning of Article 13(1)(d) if the reproduced ‘element constitutes a baseline characteristic which is particularly distinctive of that product’.
The judgment clarifies a rule of the regulation which had not been subject to a preliminary ruling before. The CJEU reasonably extends the protection of PDOs and PGOs to imitations that are likely to mislead consumers by evoking the protected name.
Bernd Justin Jütte is Assistant Professor at UCD Sutherland School of Law and holds a PhD from the University of Luxembourg. His expertise is in European copyright law, specifically on transformative uses and the conflict between copyright and fundamental rights. He is the author of the book ‘Reconstructing European Copyright Law for the Digital Single Market’ (Nomos, Hart, 2017).