All Cheese? – On the Scope of Protection of a Protected Designation of Origin

Certain foodstuffs such as fruit and vegetables, fish, meat and cheese can be protected as geographical indications or designations of origin at EU level. The product is characterised by the fact that it comes from a specific place, a specific region or a specific country. But what does the protection cover? Is it limited to the product name or does it go further? The EuGH provides an answer.

The 'Morbier' is a raw milk cheese from a specific region in France. Characteristic of this cheese is its appearance – in the middle there is a horizontal black stripe. Since 22 December 2000, the 'Morbier' has held a protected designation of origin (PDO). This black stripe is explicitly mentioned in the description of the product.

Another French cheese manufacturer is not established in the territory to which the designation 'Morbier' is reserved. It distributes a cheese that does not bear the name 'Morbier', but which also has a horizontal black stripe.

The French cheese manufacturer was sued by a French association in 2013. The association is of the opinion that the defendant infringes the protected designation and acts unfairly and by taking unfair advantage of reputation by manufacturing and distributing a cheese that adopts the external appearance of the product falling within the protected designation of origin 'Morbier' in order to cause confusion with it and to take unfair advantage of its reputation and standing without having to comply with the specification of the designation of origin.

The action was dismissed in 2016/2017 in several instances by Paris courts on the grounds that the regulation on protected designations of origin is not intended to protect the appearance of a product or its properties described in the specification, but rather its name. The adoption of the appearance of a product falls within commercial and industrial freedom.

Following an appeal, a question was referred to the EuGH for a preliminary ruling on the interpretation of the corresponding regulation.

The decision of the EuGH on the scope of protection of a designation of origin

The Court of Justice of the European Union (EuGH) took a different view from the Paris judges and decided with Judgment of 17.12.2020 – C-490/19, that Art. 13 para. 1 of Regulations Nos 510/2006 and 1151/2012 is to be interpreted as meaning that it not only prohibits the use of the registered name by a third party and that it prohibits the reproduction of the form or appearance which is characteristic of a product covered by a registered name, if such reproduction is capable of leading the consumer to believe that the product in question is covered by that registered name.

The EuGH confirms that the intention is not "to prohibit a third party from using manufacturing techniques or reproducing one or more characteristic properties specified in the specification of a product covered by a registered name". However, protected designations of origin are protected in so far as they designate a product possessing certain quality or certain properties. Thus the protected designation of origin and the product covered by it are closely linked together.

If the reproduction of the form or appearance of a product covered by a registered name, without that name appearing on the product in question or on its external packaging, is capable of misleading the consumer as to the true origin of the product in question, this may, in the view of the EuGH, fall within the scope of the provision.

The dispute remains pending before the referring French court. The decision of the EuGH on the interpretation of the regulation must now be taken into account.

Conclusion

The protection of a protected designation of origin is not necessarily limited to the protection of the name. A protected designation of origin can also protect against imitation of an excessively similar appearance.