Denmark lost a dispute regarding Feta cheese produced only for export from the territory of the EU

The European Court has ruled in the case C‑159/20 the European Commission v the Kingdom of Denmark which closed the door to one of the few misunderstandings regarding the scope of geographical indication protection in the EU.

In the case at hand, Greek complained before the Commission that cheese manufacturers from Denmark use the protected geographical indication Feta by labeling their products as ‘Danish Feta’ and ‘Danish Feta cheese’. Denmark refused to prohibit such use on its territory stating that the production was only for export purposes not for sale on the territory of the EU. According to the Kingdom, this type of GI use was not prohibited by the EY Regulations.

The European Commission disagreed and initiated a lawsuit against Denmark. The Advocate General issued its opinion that reasonings are now upheld by the Court.

According to the Court’s decision:

Recital 18 of Regulation No. 11512012 states that the specific objectives of PDO and PGI protection are to ensure fair income for farmers and producers according to the qualities and characteristics of a given product or its production method and to provide clear information about products with specific characteristics related to geographic origin, thereby enabling consumers to make more informed purchasing choices.

In addition, it follows from the Court’s practice that the purpose of the PDO and PGI protection system is mainly to guarantee consumers that agricultural products bearing a registered name have certain specific characteristics due to their origin in a certain geographical area and therefore provide a guarantee of quality due to their geographical origin in order to allow agricultural operators who have made a genuine effort to improve quality to receive higher incomes in return and to prevent third parties from unfairly benefiting from the reputation, related to the quality of those products (judgments of 17 December 2020, Syndicat interprofessional de défense du Fromage Morbier, C‑490/19, EU:C:2020:1043, paragraph 35 and the case-law cited and by the analogy of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).

Since the Kingdom of Denmark points out that it follows from these objectives that Regulation No 1151/2012 is aimed at introducing a system of protection of PDOs and PGIs for products placed on the internal market because the said users are those in the Union, it should be noted that this regulation clearly applies to these users and not to users in third countries. Indeed, that regulation, adopted on the basis of Article 118 TFEU, concerns the functioning of the internal market and, as that Member State points out, is aimed at the integrity of the internal market and consumer information in the Union.

It should also be noted that the objective of informing consumers and the objective of guaranteeing a fair income for producers in accordance with the qualities of their products are interrelated, since informing consumers is aimed in particular, as is clear from the case law, at this to allow agricultural operators who have made real efforts to improve quality to receive higher incomes in return.

However, as follows from recital 18 and from Article 4(a) of Regulation No 1151/2012, the objective of guaranteeing fair income to producers in accordance with the qualities of their products is itself an objective pursued by that regulation. This also applies to the purpose of ensuring the respect of intellectual property rights enshrined in Article 1, letter c) of this Regulation.

It is clear, however, that the use of the PDO ‘Feta’ to designate products produced in the territory of the Union which do not comply with the product specification of that PDO affects the two stated objectives, even if those products are intended for export to third countries.

Finally, as regards compliance with the principle of legal certainty, it should be noted that, undoubtedly, Regulation No. 1151/2012 does not explicitly state that it also applies to products produced in the Union for the purpose of export to third countries. However, in view in particular of the general and unequivocal nature of Articles 13, 36, and 37 of Regulation No 1151/2012, which do not provide for an exception to such products, and the fact that the said objectives are clearly stated in Articles 1 and 4 of that Regulation, Article 13(3) thereof appears clear and unequivocal in so far as it obliges Member States to take appropriate administrative and judicial measures to prevent or suspend the use of a PDO or a PGI to designate products produced on their territory that do not comply of the applicable product specification, including where these products are intended for export to third countries.

Based on the stated considerations, the Court decided:

By failing to prevent or stop the use by Danish milk producers of the Protected Designation of Origin (PDO) ‘Feta’ to designate cheese that does not comply with the product specification of that PDO, the Kingdom of Denmark has failed to fulfill its obligations under Article 13(3) 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.

(unofficial translation)

Denmark has legal troubles with Feta cheese in the EU

The Advocate General of the European Court ĆAPETA has given an opinion on Case C‑159/20 European Commission v Kingdom of Denmark.

This case concerns the issue of enforcement of geographical indication rights in Denmark related to the Greek Feta cheese.

In the present case, by bringing an action under Article 258 TFEU, the European Commission asks the Court to declare that the Kingdom of Denmark has breached its obligations under Article 13 of Regulation No 1151/2012 by failing to prevent or stop the use of the name ‘Feta’ on the cheese produced in Denmark intended for export to third countries. The Commission also claims that the Kingdom of Denmark has breached its obligations of sincere cooperation arising under Article 4(3) TEU, either alone or in conjunction with Articles 1(1) and 4 of Regulation No 1151/2012.

‘Feta’ is a type of cheese, traditionally produced from sheep’s, or sheep’s and goat’s, milk in parts of Greece. For those who want to learn more about ‘Feta’, I refer to the poetic description offered by Advocate General Ruiz-Jarabo Colomer, as I could not put it in better words myself. (4) Importantly for the case at issue, since 2002, the name ‘Feta’ is registered as a protected designation of origin (‘PDO’) under EU law. 

On the basis of Regulation No 1151/2012, registration of the name ‘Feta’ as a PDO means that it can be used only for cheese originating in the specified geographical area in Greece and complying with the product specification in Regulation No 1829/2002.

Article 13(3) of Regulation No 1151/2012 obliges the Member States to take the necessary measures to prevent or stop the unlawful use of registered PDOs on their territory. The Commission, supported by the Hellenic Republic and the Republic of Cyprus, claims that the Kingdom of Denmark has breached that obligation by not preventing or stopping the use of the name ‘Feta’ for cheese produced in Denmark and intended to be exported to third countries.

The Kingdom of Denmark does not deny that it does not prevent or stop the producers on its territory from using the name ‘Feta’ if their products are intended to be exported to third countries. It considers, however, that Regulation No 1151/2012 applies only to products sold in the EU, and does not cover exports to third countries. In its view, therefore, the use of the name ‘Feta’ for cheese produced in Denmark, but destined only for export to the markets of third countries where the name ‘Feta’ is not protected on the basis of an international agreement does not amount to an infringement of Regulation No 1151/2012. Therefore, failure to prevent or stop the use of the name ‘Feta’ for exported cheese does not breach the obligation under Article 13(3) of Regulation No 1151/2012 because such an obligation does not arise under that provision.

In essence, the main dispute between the parties to the present case is about whether the relevant EU law prevents the use of the name ‘Feta’ for products exported to third countries which are not produced in accordance with the product specification of ‘Feta’ as a registered PDO.

To be clear, the dispute is not about the competences of the EU. The Kingdom of Denmark does not claim that the EU lacks competence to legislate with a view to prohibiting the use of the name ‘Feta’ for exported products. It only claims that, under current legislation, the EU legislature did not choose to prohibit such use.

Consequently, the present case requires the Court to interpret the scope of application of Regulation No 1151/2012. The prerequisite for that is an understanding of the underlying reason and purpose of protection of geographical indications, and more precisely of PDOs, as intended by the EU legislature. This case also raises some important questions concerning the principle of sincere cooperation laid down in Article 4(3) TEU in the context of infringement actions brought against the Member States.

The Advocate General’s opinion:

 In the light of the foregoing considerations, I propose that the Court should:

1. Declare that, by failing to prevent or stop the use by Danish producers of the registered name ‘Feta’ for cheese intended for export to third countries, the Kingdom of Denmark has failed to fulfil its obligations under Article 13 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;

2. Dismiss the action as to the remainder;

3. Order the European Commission and the Kingdom of Denmark each to bear their own costs; and

4. Order the Hellenic Republic and the Republic of Cyprus each to bear their own costs.

Can the Champagne PDO protection covers services?

The Advocate General of the European Court Giovanni Pitruzzella  issued his opinion on the Case C‑783/19 Comité Interprofessionnel du Vin de Champagne v GB. 

In brief, this case targets the question whether protection of a product as a geographical indication can cover related services too. The dispute has the following background:

The CIVC, the appellant in the main proceedings, is a semi-public organisation with legal personality, recognised under French law and responsible for safeguarding the interests of champagne producers. The CIVC brought an action before the Commercial Court, Barcelona, Spain seeking an order requiring GB, the respondent in the main proceedings, to cease use of the sign CHAMPANILLO, including on social media (Instagram and Facebook), to remove any insignia or advertising or commercial document featuring that sign from the market and from the internet, and to cancel the domain name ‘champanillo.es’. GB appeared before the court claiming that the sign CHAMPANILLO is used as a trade name for catering premises (tapas bars situated in the Autonomous Community of Catalonia), and that there was no likelihood of confusion with the products covered by the name ‘Champagne’ and no intention of taking unfair advantage of the reputation of that name.

The Commercial Court, Barcelona rejected all of the CIVC’s claims. It held that the use of the sign CHAMPANILLO did not constitute an evocation in breach of the ‘Champagne’ PDO, since it was intended to designate not an alcoholic beverage but catering premises – where champagne is not sold – and therefore products other than those protected by the PDO and targeting a different market. In the grounds of that judgment, the Commercial Court, Barcelona referred to the guidance provided by the Supreme Court, Spain in a 2016 judgment, in which it was ruled that the use of the term CHAMPÌN to market a non-alcoholic fizzy fruit drink consumed at children’s parties did not infringe the ‘Champagne’ PDO on account of the difference between the products concerned and their target market, despite the phonetic similarity between the two signs. 

The CIVC appealed against the judgment of the Commercial Court, Barcelona before the Provincial Court, Barcelona, Spain. The Provincial Court explains that: (i) GB has twice attempted to register the sign CHAMPANILLO as a trade mark with the Spanish patent office and that those applications were rejected, by decisions of 8 February 2011 and of 14 April 2015, following opposition from the CIVC; (ii) GB uses the image of two champagne coupes containing a sparkling beverage as a graphic medium to advertise its premises; (iii) the CIVC produced documents certifying that, until 2015, GB solda sparkling wine called ‘Champanillo’ on its premises and that sales ceased only following action taken by the CIVC.

The referring court notes that both Article 13 of Regulation No 510/2006 and Article 103 of Regulation No 1308/2013 protect PDOs in relation to products, with the sole exception of Article 103(2)(b) which also mentions services. The referring court states that it has doubts as to the scope and correct interpretation of the provisions of EU law on the protection of a PDO in a situation where the sign allegedly in conflict with that name is used in the course of trade to designate not goods but services.

In those circumstances, the Provincial Court, Barcelona decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does the scope of protection of [a] designation of origin make it possible to protect that designation of origin not only as against similar products but also as against any services which may be associated with the direct or indirect distribution of those products?

(2) Does the risk of infringement by evocation, to which the articles in question of the Community regulations refer, necessitate in the first instance a nominal analysis[,] to determine the effect that this has on the average consumer, or[,] in order to examine that risk of infringement by evocation[,] is it necessary to establish first of all that the products at issue are the same or similar or are complex products whose components include a product protected by a designation of origin?

(3) Must the risk of infringement by evocation be defined using objective criteria when the names are exactly the same or highly similar or must that risk be calibrated by reference to the products and services which evoke and are evoked in order to conclude that the risk of evocation is tenuous or irrelevant?

(4) In cases where there is a risk of evocation or exploitation, is the protection provided for in the legislation referred to specific protection related to the special features of the products concerned or must the protection be connected to the provisions on unfair competition?’

The Advocate’s opinion:

Article 103(2)(b) of Regulation No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products must be interpreted as meaning that acts of misuse, imitation or evocation of a PDO in relation to services may also come within the scope of that provision.

In order to determine whether there is an evocation of a protected designation of origin within the meaning of Article 103(2) of Regulation No 1308/2013, it is not necessary to establish, first of all, that the product covered by that designation and the product or service covered by the disputed sign are identical or comparable or that the latter product includes among its ingredients the product covered by the protected designation of origin. However, whether or not the products are identical or comparable is a factor that the national court is required to take into consideration, together with any other relevant factor, when assessing whether there is an evocation within the meaning of that provision.

The protection against evocation provided for in Article 103(2)(b) of Regulation No 1308/2013 is not limited to cases where the practice giving rise to evocation satisfies the conditions for an act of unfair competition within the meaning of the relevant provisions of the applicable national law.

New database for geographical indications – GIView

Marques Class 46 reports about a new tool for searching of geographical indications.

The new database, called GIview, is offered is offered by the EUIPO. It covers more than 5000 geographical indications from around the world. You can search based on their names or by country. The results can be shown as a list or as a map.

You can learn more for GIView from the video below.

The EU and China signed an Agreement on the protection of Geographical indication

The European Union and China signed the long waiting EU-China Agreement on Cooperation on, and Protection of, Geographical Indications.

In 2007 an initial pilot agreement allowed registration of 10 GIs from both sides.

Now each side will acknowledge the protection of 100 GIs on its territory.

The current agreement covers different aspects of geographical indication protection such as its scope, the right to use, the relationship with trademarks etc.

However, some important moments are still remaining in the gray area. For example, enforcements of rights over geographical indications will be subject only to appropriate actions of the respective authorities.

Another controversial point is when one GI can be revoke on account of genericness.

Source: Marquess Class 46.

Russia allows registration of geographical indications

matryoshka-970943_960_720Russia will allow registration of geographical indications after 27.07.2020. Until now this was possible only for the so-called appellations-of-origin which protection, however, has more requirements.

Now another type of geographical indications will be allowed for registration in the country with fewer requirements for protection.

For example, while in the case of appellations-of-origin all row-materials and production have to be done in the relevant geographical area, with the geographical indication it is enough at least one of the production phases to be in the geographical place.

For more information here.

Source: CMS Russia for Lexology.

The European Union joins the Lisbon Agreement

flag-2608475_960_720WIPO reports about the accession of the European Union to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The Agreement will come into force on 26.02.2020. In that way, every owner of European geographical indication in the EU will be able to apply for international protection in all Member States of the Agreement based on one application managed by WIPO. This by itself reduces significantly the time and money needed for such a registration process.

For more information here.