European Union: The Shape Of Things To... Eat

Could geographical indications (GIs) provide legal protection beyond the production process, but also the shape?

In a landmark ruling, the EU Court of Justice (CJEU) ruled in favour of the makers of 'Morbier' cheese, who sued a rival company for producing and marketing a lookalike cheese. The ruling states that, in certain cases, reproducing the visual appearance of a product with a protected designation of origin (PDO) is forbidden as it could mislead consumers.

The court said that even if the name Morbier does not appear on the rival's product or packaging, its reproduction was liable to mislead the consumer as to the true origin of the product.

Background of the case

For those un-initiated into the world of cheese, Morbier is a creamy French cheese with a seam of dark ash through its middle. Produced in the Jura mountains, Morbier has enjoyed the EU's protected designation of origin (PDO) since 2000, with particular reference to the thin grey line through its centre.

The distinctive line came about in the nineteenth century when cheesemakers would put curd from evening production into a round mould, cover it with edible vegetable ash overnight and then top it up from the morning milking of the cows.

Morbier's battle for its status started in 2013 when the Syndicat interprofessionnel de défense du fromage Morbier (the Syndicat), brought an action against cheesemaker Société Fromagère du Livradois SAS for having committed acts of unfair and parasitic competition by producing and marketing a cheese with the visual appearance of the product protected by the PDO "Morbier", in order to create confusion and take advantage of the reputation of the image associated with it without having to comply with the specifications of the designation of origin. The Syndicat requested the cessation of the use of the PDO "Morbier" for products not covered by the latter or any other practice that could create an erroneous impression about the origin of the product, and especially any use of a black line separating the cheese into two parts (which is an essential characteristic of the cheese protected by the PDO).

The Syndicat lost the case and a subsequent appeal in 2017, but a referring judge then sought guidance from the Luxembourg-based EU Court of Justice (CJEU).

The CJEU Decision

On 17 December 2020 the Court of Justice of the European Union (CJEU) issued its decision.

By interpreting Art. 13(1) of Regulation No 1151/2012, the CJEU clarifies two crucial points concerning the protection of GIs in the EU.

First of all, Article 13(1) of Regulation No 1151/2012 does not prohibit solely the use by a third party of the registered name.

Also, Article 13(1)(d) prohibits the reproduction of the shape or appearance characterizing a product covered by a registered name where that reproduction may lead the consumer to believe the product in question is covered by that registered name. In those circumstances, it is necessary to assess whether that reproduction may mislead the European consumer, who is reasonably well informed and reasonably observant and circumspect, taking into account all the relevant factors in the case, including the way in which the products in question are presented to the public and marketed and the factual context.

The Lesson Learned

The French "Cour de cassation", which had requested the CJEU the interpretation of Article 13(1) of Regulation No 1151/2012, will now need to decide if the directions given by the CJEU suffice to decide the case (commercialization by the "Société Fromagère du Livradois SAS" "of a cheese product reproducing the visual appearance of the PDO "Morbier") based on the above-mentioned principles.

The CJEU considers that Article 13 is not limited to prohibiting the use of the registered name, but has a broader scope of protection, which may include, among other uses, figurative signs that may generate confusion due to the conceptual proximity.

However, when we are dealing with an element of the appearance of the protected product, it is necessary 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. To this end, it is necessary to take into account, on the one hand, the consumer's perception, on the other hand, the relevant factors of the case, including the way the product is displayed and packaged.

Naturally, on the basis of the CJEU decision, it will be up to the referring body (French Courts) to determine whether the horizontal black line, along with the elements surrounding the case and the perception of the average consumer, are sufficient to create confusion as to the origin of the protected cheese.

Conclusion

Despite the UK's departure from the EU, all existing UK or EU products registered under EU GI schemes will remain protected in the UK under the UK GI schemes at minimal inconvenience to the registered holder(s).

Although the CJEU decision is good news for owners of PDOs and GIs, its relevance before UK Court is uncertain, since CJEU precedents are no longer binding to UK Court. Still, there is no doubt they hold some persuasive value.

Our expertise

Marks & Clerk LLP has a dedicated food and drink team who have a wealth of experience in advising businesses protect their valuable intellectual property rights.

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