Can a trademark be invalidated even if the claim for the lawsuit is withdrawn? – an EU Court decision

The European Court has ruled in an important case C‑256/21 KP v TV, Gemeinde Bodman-Ludwigshafen, which concerns the issue of to what extent one trademark can be invalidated if the main claim for the lawsuit is withdrawn. The dispute has the following background:

KP is the proprietor of the EU word mark Apfelzügle (‘the contested mark’), registered on 19 October 2017 for services in Classes 35, 41, and 43. It is common ground that the term ‘Apfelzügle’ denotes a vehicle designed for the harvesting of apples, consisting of several trailers pulled by a tractor.

On 26 September 2018, TV, which operates a fruit farm, and the Municipality of Bodman-Ludwigshafen published promotional information on an activity involving the harvesting and tasting of apples as part of a ride on the Apfelzügle.

KP brought an action for infringement of the contested mark before the Regional Court, Munich, Germany, seeking an order prohibiting TV and the Municipality of Bodman-Ludwigshafen from using the term ‘Apfelzügle’ for the services covered by that mark. Before that court, TV and the Municipality of Bodman-Ludwigshafen filed counterclaims for a declaration of invalidity of the contested mark, pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) thereof.

At the hearing before the Regional Court, Munich, KP withdrew his action for infringement.

TV and the Municipality of Bodman-Ludwigshafen having pursued their counterclaims in spite of that withdrawal, the Landgericht München (Regional Court, Munich), by a judgment of 10 March 2020, held that those claims were admissible, declared the contested mark invalid in respect of the services in Class 41 and rejected the claims in question as to the remainder.

The Municipality of Bodman-Ludwigshafen appealed against that judgment before the Higher Regional Court, Munich, Germany – the referring court – seeking a declaration of invalidity of the contested mark also as regards the services in Classes 35 and 43.

In its decision, the referring court states that it must first assess the admissibility of the counterclaims brought by the defendants in the light of the withdrawal by KP, noting that it is not bound on that point by the decision of the court of first instance.

In that regard, relying on the spirit and purpose of the counterclaim provided for by Regulation 2017/1001, the referring court expresses doubts as to whether an EU trademark court may rule on such a counterclaim if there has been a withdrawal of the action for infringement in response to which the counterclaim was brought.

Specifically, the referring court notes that the registration of an EU trademark is an act of a body of the European Union and that national courts do not have jurisdiction to annul such acts, save in the case of an exception expressly provided for, such as that of the filing of a counterclaim, which is, moreover, confirmed in Article 128(7) of Regulation 2017/1001. In the view of the referring court, EUIPO has ‘jurisdiction in principle’ in the matter, which is conferred on it ‘as a matter of priority’. That follows, inter alia, from Article 63(1) of Regulation 2017/1001.

The referring court observes that, according to the predominant view in German legal literature, a case such as the present one comes not within the scope of Regulation 2017/1001 but rather, pursuant to Article 129(3) of that regulation, within the scope of the rules governing German civil procedure and, specifically, of Paragraph 261(3)(2) of the ZPO, according to which the jurisdiction of the EU trade mark court established as a result of the filing of a counterclaim is independent of the outcome of the action for infringement and cannot therefore cease to exist in the event that that action is withdrawn.

However, in the view of the referring court, the need to give the defendant an opportunity to defend himself or herself no longer exists where, as a result of a withdrawal, there is no longer any need for the EU trademark court to rule on the action for infringement. That interpretation is, moreover, supported by the judgment of 19 October 2017, Raimund (C‑425/16, EU:C:2017:776). Thus, national procedural law should apply only for as long as an action provided for under EU law is pending. Furthermore, such an interpretation would not place an undue and disproportionate burden on the counterclaimant, since he or she will still be able to bring proceedings before EUIPO under Article 63 of Regulation 2017/1001.

In those circumstances, the Oberlandesgericht München (Higher Regional Court, Munich) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 124(d) and Article 128 of Regulation 2017/1001 be interpreted as meaning that the EU trademark court has jurisdiction to rule on the invalidity of an EU trademark asserted by a counterclaim within the meaning of Article 128 of Regulation 2017/1001 even after the action for infringement based on that EU trade mark for the purposes of Article 124(a) [of that regulation] has been validly withdrawn?’

The Court’s decision:

Article 124(a) and (d) and Article 128 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark,

must be interpreted as meaning that an EU trademark court hearing an action for infringement based on an EU trade mark the validity of which is challenged by means of a counterclaim for a declaration of invalidity still has jurisdiction to rule on the validity of that mark, in spite of the withdrawal of the main action.

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Breaking news – the Unified Patent Court opens its doors

The UPC Preparatory team announced that the Unified Patent Court will open its doors on 01.04.2023. From that date, the Court will start to receive new cases.

As it is well-known the Unified Patent Court will supplement and strengthen the existing centralized European patent granting system. The idea behind the implementation of this new cross-EU court is to save money and time for patent owners when they try to enforce their rights in the EU. So far this was a challenge because patent enforcement has happened only on a national level in every single EU Member State. With the new supranational court, the EU tries to become more competitive for innovation owners and investors from around the world.

Is the bicycle’s design saddle visible when used or not – a key question for design protection in the EU

The Advocate General of the European Court M. SZPUNAR has issued his opinion in the case C‑472/21 Monz Handelsgesellschaft International mbH & Co. KG срещу Büchel GmbH & Co. Fahrzeugtechnik KG.

This case focuses our attention on the question of to what extent a design incorporated into a complex product should be visible in order to be suitable for industrial design protection. The case has the following background:

Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) is the holder of design No 40 2011 004 383-0001, registered at the German Patent and Trade Mark Office, DPMA since 3 November 2011 for the products ‘saddles for bicycles or motorbikes’. The design is registered with the following single representation showing the underside of a saddle:

On 27 July 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) lodged an application with the DPMA for a declaration of invalidity of the contested design, claiming that it did not meet the necessary conditions for protection as to novelty and individual character. It asserted that the design was excluded from protection under Paragraph 4 of the DesignG on the ground that, as a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, it was not visible during normal use.

By decision of 10 August 2018, the DPMA rejected the application for a declaration of invalidity, holding that there were no grounds to exclude the contested design from protection under Paragraph 4 of the DesignG. In its view, although it was true that the design applied for in relation to ‘saddles for bicycles [or] motorbikes’ was a ‘component part of a complex product’, that component nevertheless remained visible during normal use of that complex product. The DPMA considered that normal use also covered ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, especially since Paragraph 1(4) of the DesignG contains ‘an exhaustive list of non-normal uses for the purposes of Paragraph 4 of the DesignG, designed as an exception and, as such, to be interpreted strictly’. The DPMA held that it followed from that provision that ‘any use by the end user which is not maintenance, servicing or repair work … therefore constitutes normal use’.

Following an objection lodged by Büchel against that decision, the Federal Patent Court, Germany declared the contested design invalid, by decision of 27 February 2020, on the ground that it did not satisfy the requirements of novelty and individual character. According to the Bundespatentgericht, under Paragraph 4 of the DesignG, only components which remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible for design protection. Conversely, a perspective which arises only because or when the component part of a complex product is detached cannot establish visibility such as to preclude exclusion from protection under Paragraph 4 of the DesignG. The Bundespatentgericht considered only riding a bicycle and getting on and off a bicycle as normal use for the purposes of Paragraph 1(4) of the DesignG. In its view, during such uses, the underside of the saddle is not visible either to the end-user or to another person. Monz has brought an appeal against that decision before the referring court.

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

‘1. Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognize the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

2. If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

(a) When assessing the “normal use” of a complex product by the end-user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?

(b) What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’

The Advocate General’s opinion:

1. Article 3(3) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as meaning that

• in order for a design applied to or incorporated in a product which constitutes a part of a complex product to enjoy protection under that directive, the component in question must be visible in the situation of normal use of that complex product.

2.  Article 3(4) of Directive 98/71 must be interpreted as meaning that

• the words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.

If this is confirmed by the Court it will mean that designs incorporated into complex products will have broader scope for interpretation of what exactly is a visible use.

CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat in class 7: specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.

When does Irish origin matter for trademark protection in the EU?

The General Court of the European Union has ruled in the case T-306/20 – Hijos de Moisés Rodriguez Gonzàlez SA v EUIPO, Ireland and Ornua Co-operative Ltd. The case has the following background:

In 2013, the Spanish company Hijos de Moisés Rodriguez Gonzàlez SA filed an EU trademark for the following figurative sign:

On 3 January 2014, the mark applied for was registered in respect of the following goods in Class 29: Meat, fish, poultry, and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods above.

In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

According to the Board, consumers could believe that the goods originate from Ireland which could not be the case.

The decision was applied before the General Court.

The Court annulled the first part of the Board’s decision stating that the ground of deceptiveness should have to be evaluated at the time when the trademark application was filed.

Nevertheless, the invalidation was confirmed because the Court found that the mark was filed in bad faith.

The reason for this was that the Parties, in this case, had long-lasting trade relationships, where the Spanish company had been importing Irish butter under this mark. After the end of their partnership, the above trademark was filed, which could take advantage of the associations with the Irish origin of the goods. That is to say, consumers can believe that the goods under the same mark are still from Ireland which can not be the case.

According to the Court:

In the present case, in the first place, as regards the misleading use of the contested mark, it is common ground between the parties that: (i) for decades, the applicant sold butter of Irish origin under that mark in the context of its contractual relationship with the intervener; (ii) after that relationship came to an end, it continued to sell foodstuffs under that mark; and (iii) a not insignificant part of those foodstuffs, including dairy products and pork products, was not of Irish origin. In any event, the applicant has not claimed that all the goods which it sold under the contested mark originated in Ireland.

In other words, the applicant sold goods under the contested mark even though a not insignificant part of those goods was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods.

Once the applicant had extended the use of the contested mark to goods other than butter of Irish origin, Spanish-speaking consumers, who constitute the relevant public, were likely to be misled as to the geographical origin of those goods, since they had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland. Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the intervener which supplied it with Irish butter.

Is there bad faith in the case of new registration of former trademarks?

Is it possible for an old former trademark that is not protected anymore to be registered by a new owner and whether this can be a bad faith practice? This is the question to which the General Court of the European Union has answered recently in the case T‑250/21 Ladislav Zdút v EUIPO: The case has the following background:

On 6 May 2013,  Ladislav Zdút filed an application for registration of an EU trademark with EUIPO for the following sign:

The goods for which registration was sought were:

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks’;

–  Class 24: ‘Bed covers; Table covers’;

–  Class 25: ‘Clothing, footwear, headgear’.

The mark was registered on 31 October 2014 under number 11794112.

On 17 June 2019, the interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity against that mark (‘the contested mark’), in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, in respect of all the goods covered by that mark. They claimed that the applicant was acting in bad faith when he filed the application for registration of the contested mark. They stated, inter alia, that in Czechoslovakia in the 1930s, their grandfather, Mr Jan Nehera, had established a business marketing clothing and accessories and had filed and used a national mark identical to the contested mark (‘the former Czechoslovak trademark’).

By decision of 22 April 2020, the Cancellation Division of EUIPO dismissed the application for a declaration of invalidity, on the ground that the applicant’s bad faith when he filed the contested mark had not been established.

On 15 June 2020, the applicants filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO upheld the interveners’ appeal, annulled the decision of the Cancellation Division, and declared the contested mark invalid.

In essence, the Board of Appeal found that the former Czechoslovak trademark was a well-known mark and had been put to genuine use in Czechoslovakia in the 1930s. It held that the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trademark, which retained a certain surviving reputation. The Board of Appeal also stated that the applicant had attempted to create an association between himself and that former Czechoslovak trademark. In those circumstances, the Board of Appeal considered that the applicant’s intention was to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark. It found that the applicant was acting in bad faith when he filed the application for registration of the contested mark.

The decision was appealed.

According to the Court, the fact that one mark was been protected in the past, being reputable amongst consumers, does not mean automatically that every new application for the same mark will be deemed as made in bad faith. It is necessary for the reputation of the old mark still to exist and the bad faith actions to be proved.

According to the Court:

However, it should be borne in mind that, according to the case-law, the existence on the part of the relevant public of a link between a later trademark and a former sign or name cannot be sufficient, on its own, to support a finding that unfair advantage was taken of the reputation of the sign or of the former name.

In addition, it should be noted that the concept of unfair advantage being taken of the reputation of a sign or a name covers a situation in which a third party rides on the coat-tails of a formerly renowned sign or name in order to benefit from its power of attraction, its reputation and its prestige and, without any financial compensation and without having to make any efforts of its own in that regard, to exploit the commercial effort expended by the proprietor or user of that sign or of that name in order to create and maintain the image of that sign or of that name.

However, in the present case, the applicant claims, unchallenged either by EUIPO or by the interveners, that in 2013, the former Czechoslovak trademark and the name of Mr Jan Nehera were completely forgotten by the relevant public, and that he himself devoted considerable effort, time and money to revive the Nehera mark and to make known the history of Mr Jan Nehera and of his business. It follows that, far from merely having exploited in a parasitic way the past reputation of the former Czechoslovak trademark and the name of Mr Jan Nehera, the applicant made his own commercial efforts in order to revive the image of the former Czechoslovak trademark and thus, at his own expense, to restore that reputation. In those circumstances, the mere fact of having referred, for the purposes of promoting the contested mark, to the historic image of Mr Jan Nehera and of the former Czechoslovak trademark does not appear to be contrary to honest practices in industrial or commercial matters.

Secondly, and in any event, the former Czechoslovak trademark and Mr Jan Nehera’s name no longer benefited from any legal protection in favour of a third party at the date on which the application for registration of the contested mark was filed (see paragraphs 42 and 43 above). It follows that Mr Jan Nehera’s descendants and heirs did not hold any right that might be susceptible to fraud or to being usurped by the applicant. Therefore it does not appear that, in applying for registration of the contested mark, the applicant intended to defraud the descendants and heirs of Mr Jan Nehera or to usurp their alleged rights.

In the fifth and last place, EUIPO claims, as the Board of Appeal stated in paragraph 36 of the contested decision, that the concept of bad faith does not necessarily imply any degree of moral turpitude.

In that regard, it is sufficient to note that, according to the case-law cited in paragraph 23 above, the concept of bad faith presupposes the presence of a dishonest state of mind or intention. In the present case, EUIPO and the interveners have not established that the applicant was driven by a dishonest state of mind or intention when he filed the application for registration of the contested mark.

It follows from all of the foregoing that the Board of Appeal erred in finding that the applicant intended to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark and in finding that he was acting in bad faith when filing the application for registration of the contested mark.

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)