Intellectual property: cheese & bubbles at the ECJ – manchego, morbier and champagne are served

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Intellectual property: cheese & bubbles at the ECJ – manchego, morbier and champagne are served

September 30, 2021 - 3 min

With its ruling C-783/19 of 9 September 2021, the Court of Justice has issued a new decision on the scope of protection of PGIs/PDOs.

Geographical indications establish intellectual property rights for specific products, whose qualities are specifically linked to the area of production. The EU geographical indications system protects the names of products (e. g. for food products, wines, etc.) that originate from specific regions and have specific qualities or enjoy a reputation linked to the production territory. The differences between protected designations of origin (PDO) and protected geographical indications (PGI) are linked primarily to how much of the product’s raw materials must come from the area, or how much of the production process must take place within the specific region. European legislation protects registered PDOs and PGIs, amongst others against any imitation or evocation and against any other practice liable to mislead the consumer as to the true origin of the product.

The decision

In the case under review, the Comité Interprofessionnel du Vin de Champagne (CIVC) had brought an action before the Spanish courts seeking to prohibit the use of the term champanillo (in Spanish “small champagne”) by a chain of tapas bars, using in particular a graphic medium representing two cups filled with a sparkling drink. The use of the said sign would, according to the Committee, constitute an infringement of the PDO ‘Champagne’.

Finally, a question was referred to the Court of Justice for a preliminary ruling in order to interpret EU law on the protection of products covered by a PDO when the term “champanillo” is used in the trade to designate services (in particular catering services) rather than products.

The Court held that the relevant legislation protects PDOs against conduct relating to both products and services, establishing a very broad protection which is intended to extend to any use seeking to take advantage of the reputation associated with the products covered by one of those indications.

According to the Court’s case law, in general, the concept of “evocation” covers the case where the sign used to designate a product/service incorporates part of a PGI or PDO, so that the consumer, in the presence of the name of the product in question, is led to have in mind, as an image of reference, the goods benefiting from that indication or designation.

The consumer must therefore be able to establish a link between the term used to designate the product/service in question and the PGI/PDO, a link which may result from several elements such as the partial incorporation of the protected designation, the phonetic and visual similarity between the two names, the resulting similarity, the conceptual proximity between the PDO and the name in question, etc., and which it will be up to the national court seized of the case to assess.

Larger perspective

Previously, on 17 December 2020, the Court of Justice had already given its decision in the Morbier case (ECJ C-490/19). The Court had indicated that the scope of protection of a PGI/PDO is not limited to its name but may, in certain circumstances, cover the shape and appearance of the product, without that name appearing either on the product in question or on its packaging.

To determine if this is the case, it is necessary to assess whether an element of the appearance of the product covered by the registered name constitutes a particularly distinctive feature of that product, so that its reproduction may, in conjunction with all the relevant elements of the case, lead the consumer to believe that the product containing that reproduction is a product covered by the registered name.

In the 2019 “Queso Manchego” case (ECJ C-614/17), the Court had already extended the concept of evocation to figurative elements, considering that the evocation of a registered name is capable of being produced by the use of figurative signs.

The further piece of case law contributes to a further strengthening of the scope of protection of PGIs and PDOs.

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