The matter at hand

Syndicat interprofessionnel de défense du fromage Morbier is an organisation enforcing the rights for the protected designation of origin (PDO) ‘Morbier’. Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’ until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’.

The Syndicat accused the Société of infringing the protected designation by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’. For that reason, the Syndicat brought proceedings against the Société in France.

In supreme court appeal, the referring court, Cour de cassation (Court of Cassation of France) considered that the appeal before it raised the question whether the protection granted to a PDO (Article 13(1) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 and equivalent stipulations) prohibits solely the use by a third party of the registered name, or, whether it also stretches to the reproduction of the shape or appearance characteristic of a product covered by a registered name, where that reproduction is liable to mislead the consumer as to the true origin of the product.

The judgment of the ECJ

As a preliminary observation to the first part of the question, the ECJ sets out that Article 13(1)(a) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 prohibits direct or indirect use of a registered name for products not covered by the registration, in an identical form or a form that is phonetically and/or visually highly similar. In addition, Articles 13(1)(b) to (d) of that regulation prohibit other types of conduct against which registered names are protected and which do not use the names themselves either directly or indirectly (paragraph 24). Thus, the ECJ considers, the scope of Article 13(1)(a) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 must necessarily be distinguished from that relating to the other rules on the protection of registered names contained in Article 13(1)(b) to (d) of those regulations (paragraph 25). 

The ECJ subsequently recalls that Article 13(1)(b) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 must be interpreted as meaning that a registered name may be evoked through the use of figurative signs (paragraph 27). In addition, the ECJ notes that, with regard to the conduct referred to in Article 13(1)(c) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006, those provisions widen, in relation to points (a) and (b) of those articles, the scope of the protection by including, inter alia, ‘any other indication’. The ECJ considers that ‘’the expression ‘any other indication’ includes information which may appear in any form on the inner or outer packaging of the product concerned, on advertising or on documents relating to that product, in particular in the form of text, pictures or a container likely to provide information on the provenance, origin, nature or essential qualities of that product’ (paragraph 28)’.

With regard to Article 13(1)(d) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006, the ECJ notes that the words ‘any other practice’ intend to cover any conduct not already covered by the other provisions of those articles and thus to tighten the system of protection for registered names (paragraph 29). Thus, the ECJ concludes that it follows that Article 13(1) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 is not limited to prohibiting the use of the registered name itself, but has a wider scope (paragraph 30).

Regarding the second part of the question, whether Article 13(1)(d) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 must be interpreted as prohibiting the reproduction of the shape or appearance characteristic of a product covered by a registered name, where that reproduction is liable to mislead the consumer as to the true origin of the product, the ECJ reiterates that Article 13(1)(d) of PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs 2006 broadly covers all conduct, other than that prohibited by Article 13(1)(a) to (c) of that regulation (paragraph 33).

Upon assessing whether this protection even stretches to use that is not similar to the registered name, the ECJ establishes that "the protection provided for by those provisions concerns, according to the wording itself of those provisions, the registered name and not the product covered by that name” (paragraph 36). The ECJ nonetheless concludes that “the reproduction of the shape or appearance of a product covered by a registered name may fall within the scope of those provisions without that name appearing either on the product in question or on its packaging”, provided that “that reproduction is liable to mislead the consumer as to the true origin of the product in question” (paragraph 38).

Upon assessing whether this is the case, reference should be made to the average European consumer and to all the relevant factors in the present case (paragraph 39). Then, with regard an element of the appearance of the product covered by the registered name, as is the topic of the main case, the ECJ considers that “it is necessary, in particular, to assess whether that element constitutes a baseline characteristic which is particularly distinctive of that product so that its reproduction may, in conjunction with all the relevant factors in the case in point, lead the consumer to believe that the product containing that reproduction is a product covered by that registered name” (paragraph 40).