CJEU: prohibition of the reproduction of the shape or appearance of a product protected by a PDO if it misleads the consumer as to its origin21/01/2021
At the European level, agricultural, forestry and seafood products can benefit from a sign identifying their quality and origin through Protected Designations of Origin (hereafter “PDO”) or Protected Geographical Indications (hereafter “PGI”).
PDOs and PGIs are supranational titles whose names serve to identify a product or foodstuff originating in a specific place, region or even country.
In this case, the case brought before the Court of Justice of the European Union (hereinafter “CJEU”) concerns Morbier.
Morbier is a cheese made in the Jura region that has had a PDO for about twenty years. It is characterized by the presence of a black stripe – which divides it horizontally in two. This characteristic is explicitly mentioned in the product description contained in the specifications for this PDO.
In 2013, the Syndicat interprofessionnel of defense of Morbier (hereafter “the Syndicat”) sued the Society Cheese of Livradois in front of the High Court of Paris on the grounds that it infringes on the PDO “Morbier” and that it commits acts of unfair and parasitic competition by manufacturing and marketing a cheese with the visual appearance of the Morbier covered by the PDO.
Its action is dismissed.
The Paris Court of Appeals confirms this rejection. According to the Court, a PDO is intended to protect not the appearance of a product or its characteristics, but its name, so that it does not prohibit the manufacture of a product using the same techniques.
The Syndicate appeals to the Supreme Court.
The Court of Cassation referred to the CJEU for a preliminary ruling on how to interpret Article 13 §1(d) of Regulations 510/2006 and 1151/2012 (hereinafter “the Regulations”) relating to the scope of protection covered by a PDO: can the taking over of the physical characteristics of a product covered by a PDO without using the registered name constitute a practice liable to mislead the consumer as to the true origin of the product?
- First, the CJEU begins its exegesis by stating that articles 13 §1 a) to c) of the regulations contain a graduated list of prohibited acts. It then observes that they are not limited to prohibiting the use of the registered name. She infers from this that article 13 §1 (d) of the regulations covers all acts other than those prohibited by article 13 §1 (a) and (c) which may mislead the consumer as to the origin of the product in question.
- Secondly, the CJEU observes that, while the protection provided by the regulations relates to the registered name and not to the product, PDOs are protected in so far as they designate a product which has certain qualities and characteristics.
Consequently, the reproduction of the shape or appearance of a product covered by a PDO, without the PDO appearing either on the product in question or on its packaging, may fall within the scope of Article 13(1)(d).
In any case, the reproduction of the shape or appearance characterizing a product covered by a PDO may be prohibited when such reproduction is likely to lead the consumer to believe that the product in question is covered by that PDO.
The CJEU specifies that in making such an assessment, all relevant factors must be taken into account, including the manner in which the product is presented to the public (i) the manner in which the product is marketed (ii) the factual context (iii).
In this case, the CJEU considered that the black stripe separating the cheese in half horizontally was indeed an element of the appearance of the product covered by the registered name and that its reproduction could lead the consumer to believe that the product containing this reproduction was covered by the “Morbier” PDO.
The marketing of such a cheese must therefore be prohibited.
By the IP-IT team of the UGGC Law Firm
Judgment References: CJEU, December 17, 2020, C-490/19
 With regard to PDO, the qualities or characteristics of the product or foodstuff must be essentially or exclusively attributed to the geographical environment in question, and all steps of production must take place in a defined geographical area (Article 2 of Regulation (EC) No 510/2006).