Characteristic shape or appearance of a protected designation of origin (PDO) may be protected in certain cases
28-12-2020 Print this page
Article 13(1) of Regulation No 1151/2012 (PDO scope of protection) covers, in a broad sense, all acts which may mislead the consumer as to the true origin of the product concerned: does not merely prohibit the use by a third party of the registered name and prohibits 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 reasonably well informed and reasonably observant and circumspect, taking into account all the relevant factors in the case.
PROTECTED DESIGNATION OF ORIGIN
From the press release: "Morbier is a cheese produced in the Jura mountains (France) which has enjoyed a protected designation of origin (PDO) since 22 December 2000. It is characterised by the presence of a black line which divides the cheese in two horizontally. [...]
Société Fromagère du Livradois SAS, which has produced Morbier cheese since 1979, is not situated within the geographical area reserved for the name ‘Morbier’. From the expiry of a transitional period it has therefore used the name ‘Montboissié du Haut Livradois’ for its cheese. [...]
In those circumstances, the Cour de cassation (Court of Cassation, France) seeks a ruling by the Court of Justice on the interpretation of Article 13(1) of Regulation No 510/2006 1 and Article 13(1) of Regulation No 1151/2012, 2 which concern the protection of registered names. In particular, the question arises as to whether the reproduction of the physical characteristics of a product covered by a PDO without the use of the registered name may constitute a practice that is liable to mislead the consumer as to the true origin of the product, which is prohibited by Article 13(1)(d) of those two regulations. [...]
The Court finds, in the first place, that Article 13(1) of Regulation No 510/2006 and Article 13(1) of Regulation No 1151/2012 do not prohibit solely the use by a third party of the registered name. In the second place, the Court states that Article 13(1)(d) of both of those regulations prohibits the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction may lead the consumer to believe the product in question is covered by that registered name.
In that regard, it is necessary to assess whether that reproduction may mislead the European consumer, who is reasonably well informed and reasonably observant and circumspect, taking into account all the relevant factors in the case, including the way in which the products in question are presented to the public and marketed and the factual context. In reaching those findings, the Court notes, first of all, that Article 13(1) of Regulation No 510/2006 and Article 13(1) of Regulation No 1151/2012 contain a graduated list of prohibited conduct and do not merely prohibit the use of the registered name itself. Thus, although they do not specify the prohibited conduct, Articles 13(1)(d) of both of those regulations broadly cover any conduct, other than that prohibited by Articles 13(1)(a) to (c), which may result in the consumer being misled as to the true origin of the product in question. [...]"
C-490/19 - ECLI:EU:C:2020:1043
Nelisa de Bruin
