The matter at hand

Industrial Quesera Cuquerella SL (‘IQC’), established in La Mancha, Spain, markets cheeses carrying labels with the words ‘Quesos Rocinante’ (‘Rocinante cheeses’) and an illustration of a knight on a bony horse set against a landscape with windmills and sheep. This illustration and the word ‘Rocinante’ refer to the famous novel Don Quixote de La Mancha by Miguel de Cervantès (‘Rocinante’ being the name of Don Quixote’s horse).

The Queso Manchego Foundation is responsible for managing and protecting the protected designation of origin (PDO) ‘queso manchego’, which covers cheeses made in the region of La Mancha from sheep’s milk in accordance with the requirements of the product specification of that PDO. The cheeses marketed by IQC were not covered by that PDO.

The Queso Manchego Foundation brought an action against IQC before the Spanish court seeking a declaration that the use of the illustrations and the words ‘Quesos Rocinante’ infringed the PDO, because those illustrations and words constituted an unlawful evocation of that PDO for the purpose of Article 13(1)(b) of the PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs.

The action was dismissed in first instance and on appeal, on the ground that the use of images typical of La Mancha would lead consumers to think of the region of La Mancha but not necessarily of the cheese covered by the PDO ‘queso manchego’. In the further appeal against this decision, the Tribunal Supremo (Supreme Court, Spain) raised preliminary questions regarding the interpretation of Article 13(1)(b) of the PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs, asking whether a PDO may be evoked through the use of figurative signs, whether a PDO can also be invoked against a producer established in the region associated with the PDO and whether it is sufficient if the PDO is evoked in the mind of the consumers of the Member State with which the PDO is geographically associated.

The judgment of the ECJ

In response to the first question, the ECJ considers that it is apparent from the wording of Article 13(1)(b) of the PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs that registered names must be protected against ‘any’ evocation, and therefore not only against words, but also against figurative signs capable of evoking in the mind of the consumer products whose designation is protected. The ECJ further recalls its decision in Scotch Whisky Association (C‑44/17), in which it held that in determining whether there is an ‘evocation’ within the meaning of Article 16(b) of the Spirits Regulation, “the decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected” (paragraph 20).

The ECJ holds that, therefore, “it cannot be excluded, in principle, that figurative signs may trigger directly in the consumer’s mind the image of products whose name is registered on account of their ‘conceptual proximity’ to such a name” (paragraph 22). The ECJ holds that a contextual interpretation confirms this as well and also guarantees the objective of the regulation, that the consumer has clear, succinct and credible information regarding the origin of the product.

Consequently, the ECJ’s answer to the first question is that Article 13(1)(b) of the PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that a registered name may be evoked through the use of figurative signs.

The ECJ then goes into the question of whether Article 13(1)(b) of the PGI and PDO RegulationCouncil Regulation [EU] No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs can be invoked against a producer established in the region associated with the PDO, but whose similar or comparable products are not covered by it. The ECJ rules that it can, considering that excluding such a producer from the scope of that provision “would have the effect of authorising a producer to use figurative signs which evoke the geographical area whose name is part of a designation of origin covering an identical or similar product to that of that producer and, accordingly, of allowing him to take unfair advantage of the reputation of that designation” (paragraph 35).

As to the assessment of whether the use by a producer of figurative signs which evoke the geographical area whose name is part of a PDO amounts to evocation of a registered name, the ECJ notes that the national court “must essentially rely on the presumed reaction of consumers, it being essential that the latter establish a link between the (…) figurative signs (…) and the registered name” (paragraph 38). In that regard, the national court must assess whether the link between the figurative signs and the registered name is “sufficiently clear and direct”, with the result that the registered name “is especially brought to the mind” of consumers confronted with the figurative signs (paragraph 39). The ECJ rules that in the present case, this means that the referring court must ensure that the figurative signs, consisting of illustrations of a character resembling Don Quixote de La Mancha, a bony horse and landscapes with windmills and sheep, are capable of creating conceptual proximity with the PDO ‘queso manchego’ so that the image triggered directly in the consumer’s mind is that of the product protected by that PDO.

In response to the third question, the ECJ rules that it is sufficient if the relevant figurative and word elements evoke the registered name in the mind of the “consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed”, in this case Spain (paragraphs 49 and 50). The ECJ adds that, if that is the case, the registered name must be protected against evocation “wherever that may occur throughout the territory of the European Union” (paragraph 49).