Geographical indications can cover not only names but product appearance too – an EU Court decision

The European Court has ruled in case C‑490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS. This case focuses on the issue to what extent protection of geographical indications covers their names as well as the product appearance too. The case has the following bachground:

In accordance with the decree of 22 December 2000, Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’. Moreover, on 5 October 2001, Société Fromagère du Livradois filed an application in the United States for the US trade mark ‘Morbier du Haut Livradois’, which it renewed in 2008 for 10 years, and, on 5 November 2004, it filed an application for the French trade mark ‘Montboissier’.

On 22 August 2013, accusing Société Fromagère du Livradois of infringing the protected designation and committing acts of unfair and parasitic competition by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’, in order to create confusion with that product and to benefit from the renown of the image associated with it, without having to comply with the specification of the designation of origin, the Syndicat brought proceedings before the Regional Court, Paris, France requesting that Société Fromagère du Livradois be ordered to cease any direct or indirect commercial use of the name of the PDO ‘Morbier’ for products not covered by that name, any misuse, imitation or evocation of the PDO ‘Morbier’, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product by any means liable to convey a false impression as to the origin of the product, any other practice liable to mislead the consumer as to the true origin of the product and, in particular, any use of a black line separating two parts of the cheese, and to compensate it for the damage suffered.

Those applications were dismissed by judgment of 14 April 2016, which was upheld by the Court of Appeal, Paris, France by judgment of 16 June 2017. The Court of Appeal, Paris held that the marketing of a cheese which has one or more features contained in the specification for Morbier cheese, and which therefore resembles that cheese, did not constitute misconduct.

In that judgment, after stating that PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication, and after taking the view that, in the absence of an exclusive right, reproducing the appearance of a product falls within the scope of the freedom of trade and industry, the Court of Appeal, Paris held that the features relied on by the Syndicat, in particular the blue horizontal line, relate to a historical tradition, an ancestral technique present in other cheeses, which were implemented by Société Fromagère du Livradois even before the PDO ‘Morbier’ was obtained, and which are not built on the investments made by the Syndicat or its members. That court held that, although the right to use vegetable carbon is conferred only on cheese with the PDO ‘Morbier’, in order to comply with United States legislation, Société Fromagère du Livradois had to replace it with grape polyphenol, and therefore the two cheeses cannot be likened as a result of that feature. Noting that Société Fromagère du Livradois had claimed other differences between the Montboissié and the Morbier cheeses relating, inter alia, to the use of pasteurised milk in the former and raw milk in the latter, the court concluded that the two cheeses were distinct and that the Syndicat was seeking to extend the protection of the PDO ‘Morbier’ for commercial interests, which was unlawful and contrary to the principle of free competition.

The Syndicat appealed on a point of law against the judgment of the Court of Appeal, Paris before the referring court, the Court of Cassation, France. In support of its appeal, it submits, first, that a designation of origin is protected against any practice liable to mislead the consumer as to the true origin of the product and that in holding, however, that only the use of the name of the PDO is prohibited, the Court of Appeal, Paris infringed Article 13 of Regulation No 510/2006 and the same article of Regulation No 1151/2012. The Syndicat submits, next, that by merely stating, first, that the features that it relied on related to a historical tradition and were not dependent on the investments made by the Syndicat and its members and, secondly, that the ‘Montboissié’ cheese marketed since 2007 by Société Fromagère du Livradois was different from ‘Morbier’ cheese, without investigating, as requested, whether Société Fromagère du Livradois’ practices, in particular copying the ‘cinder line’ feature of Morbier cheese, were liable to mislead the consumer as to the true origin of the product, the court of appeal’s decision had no legal basis in the light of that legislation.

For its part, the Société Fromagère du Livradois maintains that the PDO protects products from a defined region, which alone can claim the protected designation, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression that they are covered by the designation in question. It is to be inferred from national law that any use of the sign constituting the PDO to designate similar products which are not entitled to that designation, either because they do not come from the defined area or because they come from it without having the required properties, is prohibited, but that it is not prohibited to market similar products, provided that such marketing is not accompanied by any practice liable to cause confusion, in particular by the misuse or the evocation of that PDO. It also argues that a ‘practice liable to mislead the consumer as to the true origin of the product’, within the meaning of Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012, must necessarily focus on the ‘origin’ of the product. It must therefore be a practice which causes the consumer to think that the product he or she is encountering is the PDO product in question. It considers that that ‘practice’ cannot result merely from the appearance of the product in itself, without any indication on its packaging referring to the protected origin.

The referring court states that the appeal before it raises the novel question of whether Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 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. Noting in particular that the Court has never ruled on that question, it considers that there is doubt as to the interpretation of the expression ‘other practice’ in those articles, which constitutes a particular form of infringement of a protected designation if it is liable to mislead the consumer as to the true origin of the product.

The question therefore arises, according to the referring court, as to whether the reproduction of physical characteristics of a product protected by a PDO may constitute a practice that is liable to mislead the consumer as to the true origin of the product, as prohibited by Article 13(1) of the regulations cited above. That question amounts to determining whether the presentation of a product that is protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, is capable of constituting an infringement of that designation, despite the fact that the name has not been reproduced.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they 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?’

The Court’s decision:

Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that they do not prohibit solely the use by a third party of a registered name.

Article 13(1)(d) of Regulation No 510/2006 and Article 13(1)(d) of Regulation No 1151/2012 must 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. 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.