Facts of the case

The decision is based on a legal dispute in France regarding the cheese "Morbier", which has been a PDO since 2000. In the underlying dispute, an association for the defence of Morbier cheese sued a French cheese manufacturer, as the association believed the defendant`s products infringed upon the PDO. Although the manufacturer's cheese was not distributed under the name "Morbier", the association was of the opinion that the defendant`s products at least looked like dairy products protected under the term "Morbier". This also violated the PDO, so the association said. 

The original "Morbier" is produced in the Jura mountains (France) and characterized by a black stripe dividing the cheese horizontally into two halves. The black stripe that consists nowadays of vegetable charcoal is explicitly mentioned in the description of the product, as it is included in the PDO specification.

Also the cheese of the defendant has such a horizontal black stripe, but it is not made of vegetable charcoal. In addition, the manufacturer is not located in the geographical area of the Jura mountains where the protected Morbier cheese is produced.

According to the association, by reproducing the characteristic appearance of Morbier, the defendant violated the PDO and thus committed an unfair act exploiting its reputation and likely misleading consumers. However, the association was unsuccessful at first and second instance. According to the French courts, Article 13(1) of the relevant Regulations Nos. 510/2006 and 1151/2012 did not aim at protecting the appearance of a product or its characteristics as described in the specification, but only the name of the PDO as such. Therefore, the marketing of the defendant`s cheese did not infringe upon the PDO, despite any similarity to the "real" Morbier.

The association then appealed to the Court of Cassation (Cour de Cassation). In support of its appeal, the association argued that, in particular, under Article 13 (1) (d) of Regulation No 1151/2012, a PDO was protected against any practice  misleading the consumer as to the true origin of the product. In the cassation appeal, the Court of Cassation then referred to the CJEU for a preliminary ruling with the question whether;

"Article 13 (1) of Regulation No 510/2006 and Article 13 (1) of Regulation No 1151/2012 [must] be interpreted as prohibiting solely the use by a third party of the registered name, or […] [whether] they [must] be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?"

Decision

In its decision, the CJEU stated that the relevant Art. 13 of Regulations Nos. 510/2006 and 1151/2012 contained a graduated list of prohibited conduct and did not merely prohibit the use of the registered name itself. The CJEU further clarified that this was already apparent from Art. 13 (1) (b) to (d) of the two regulations which also prohibited other types of conduct that did not directly or indirectly involve the name itself.

However, the CJEU held that, in principle, only the registered designation of origin was subject to protection, and not the product designated by it. Nonetheless though, the PDO and the product covered by it were closely connected, the CJEU said. Therefore, the reproduction of a characteristic shape or appearance of the product at issue could also be prohibited under Art. 13(1)(d) if consumers were thereby misled as to the true origin of the product.

Article 13(1)(d) of the Regulations acts as a catch-all element in the system for the protection of PDOs by covering other practices that are not already covered by the other provisions of the same Article. Therefore, the reproduction of a certain shape or appearance of a product - in this case the black horizontal stripe in the middle of the cheese - could also be prohibited.

Next steps

The decision strengthens the protection of PDOs. In practice, this can lead to far-reaching consequences, as producers of PDO-protected products could now take more effective legal measures against imitations. However, it should also be mentioned that the CJEU specifically pointed out that it was necessary to consider, in the light of all the relevant circumstances of the individual case, whether the reproduction of a characteristic appearance or shape was likely to mislead the consumer. The decision in the individual case was therefore still incumbent on the national courts - with a significant margin of appreciation.

Authored by Yvonne Draheim and Patrick Fromlowitz