ECJ and Morbier: Designation of origin protects more than the name

The ECJ ruled today in the case ‘ Morbier cheese ‘ on an important issue concerning the scope of protection of a designation of origin and geographical indication. Does the designation of origin protect only the registered name or does the protection also prevent the imitation of the protected product?

Dresdner Christstollen, ham “Schwarzwälder Schinken”, Italien Aceto Balsamico di Modena and now French Morbier cheese: more than 1000 specialties from the EU are protected by the EU designation of origin “protected geographical indication” or “protected designation of origin”. These designations are subject to a protection system according to EU rules under EU Regulation No. 510/2006, now essentially EU Regulation No. 1151/2012.

The highest European court (ECJ) had to decide today in the case of “Morbier cheese” on the interpretation of Article 13 (1) of Regulations No. 510/2006 and 1151/2012. The question was, does the designation of origin protect only the name, the term, or does the protection also prevent the imitation of the protected product? Ultimately, it is also the question of whether the manufacturing techniques also fall within the scope of protection.

Protected designation of origin and its product are closely linked

The court today reiterated the objective of the system of protected designations of origin and protected geographical indications: it provides consumers with a guarantee of certain specific characteristics and a guarantee of quality based on geographical origin. Thus, the protected designation of origin and the product it covers are closely linked, the court explained.

A protected designation of origin prohibits more than just the use of a registered name by a third party, the ECJ ruled. Art. 13(1) of the relevant EU Regulations Nos. 510/2006 and 1151/2012 contain a graduated list of prohibited conduct and do not merely prohibit the use of the registered name itself.

For example, Article 13(1)(d) provides that registered names are protected against “any other practice liable to mislead the consumer as to the true origin of the product.” However, it does not specify which practices are prohibited by this provision.

Are the production techniques protected by designation of origin?

And often – as in the case of “Morbier cheese” – the object of protection, which is the wording under the protection as a designation of origin, is the registered name – and not the product named with it. Therefore, Cour d’appel de Paris (Court of Appeal of Paris, France) had ruled that a protected designation of origin could not protect the appearance of a product or its characteristics, but only its name. A product could therefore be manufactured using the same techniques.

The ECJ confirmed that the use of manufacturing techniques or the reproduction of one or more characteristic properties indicated in the specification of a protected product cannot per se be prohibited to a third party. However, this is prohibited if this reproduction of a protected product is likely to mislead the consumer as to the true origin of the product, the ECJ ruled.

Misleading of the consumer is to be examined in the individual case

It must therefore be examined – taking into account all the relevant circumstances of the individual case – whether that representation is likely to mislead the normally informed European consumer who is reasonably observant and circumspect. All the relevant circumstances of the case must be taken into account, the ECJ explained, including the manner in which the products in question are offered and marketed to the public and the factual context.

For the Morbier cheese case in the main proceedings, it must also be examined, in particular with regard to an element of the product’s appearance, whether that element constitutes a particularly distinctive reference characteristic of that product, the court added.

Conclusion

As in the Black Forest Ham “Schwarzwälder Schinken” case, the ruling places the responsibility for the decision in the hands of the national courts. In view of more than 1,000 protected specialties, a little more legal bindingness in the area of protected designation of origin and geographical indication would do good. Today’s ruling makes a small contribution to this – but still leaves the national courts wide scope for decision-making.

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