Where to draw the line – a cheesy decision on the scope of PDO protection
Court of Justice of the European Union, judgment of 17 December 2020, Case C-490/19 – Syndicat interprofessionnel de défense du fromage Morbier and Société Fromagère du Livradois SAS
In its recent decision, the Court of Justice of the European Union (CJEU) had to decide on the scope of protection of geographical indications and designations of origin (PDOs) for agricultural products and foodstuffs. The CJEU concluded that said protection not only covers the registered name, but also the representation of a particular shape or appearance which is a characteristic of the product under the protected name.
The decision is based on a French legal dispute concerning the cheese “Morbier”, which has had PDO protection since 2000. It is produced in the Jura mountains in France and is marked by a characteristic black stripe that divides the cheese horizontally into two halves. The black stripe is explicitly mentioned in the description of the product included in the PDO specification. These days this black stripe consists of vegetable charcoal.
In 2013, the “Inter-professional association in defence of Morbier cheese” sued the French cheese manufacturer Société Fromagère du Livradois SAS. The cheese manufacturer was selling a cheese that featured a similar horizontal black stripe, in this case not made of vegetable charcoal. Moreover, the manufacturer was not located in the geographical area of the Jura mountains where the “real” Morbier is produced. It is important to note that the manufacturer was not using the name “Morbier” to sell said cheese.
Nevertheless, according to the association, by reproducing the characteristic appearance of Morbier, the manufacturer infringed the PDO and thus committed an unfair act, by taking advantage of its reputation and misleading the consumer.
At first it seemed as if protection for their cheese would not be as extensive as the association had hoped for. According to the court of first instance, a PDO does not protect the appearance of a product or its characteristics described in the specification, but only the protected name itself. The marketing of a cheese that simply shared a characteristic of the Morbier cheese would therefore not be unlawful, despite any similarity between the products.
The association, however, not being one to back down, appealed this decision before the Court de Cassation, the highest court of ordinary jurisdiction in France. According to the association, a PDO should not only protect against the unlawful use of the protected name, but also against any practice liable to mislead the consumer as to the true origin of the product. The Court then called upon the CJEU to decide whether the presentation of a product is also covered by a PDO.
The CJEU stated that a PDO does not merely prohibit the use of the registered name itself. In principle, only the registered designation of origin is protected and not the product designated by it. However, the CJEU found that the PDO and the product covered by it were closely linked, such that the reproduction of a shape or appearance which is characteristic of the product at issue could also be prohibited if consumers could be misled as to the true origin of the product in question. Therefore, the reproduction of a certain shape or appearance of a product – in the case at hand the black horizontal stripe in the middle of the cheese – could also be prohibited individually.
This decision strengthens the protection granted by PDOs by quite a significant margin. In practice, this decision could have far-reaching consequences, as producers of origin-protected products can now take more effective action against any imitations, even where third parties are not actually using the protected name itself. Still, it should be noted that the CJEU emphasised the fact that it must be assessed on a case by case basis whether a product features characteristics which are able to mislead the consumer with respect to the origin of the product.