With the aim of combating fraud, the concept of “Appellation d’Origine” was born at the beginning of the 20th century. It is a label that identifies a product whose manufacturing, production and processing stages have been carried out in the same geographical area and according to recognized know-how. To benefit from this label, it is necessary to meet very precise specifications. It initially aimed to defend the wine market, gradually this designation was extended to other areas such as agricultural or food products, forest products and seafood. There are 2 types of designation “: controlled designation of origin (AOC) and protected designation of origin (AOP). Initially the appellations of origin came under different national laws, therefore we spoke of controlled designation of origin. But with the emergence of the single European market and of regulations within the European Union aimed at harmonizing the law in all the Member States, the label of protected designation of origin has developed. The latter is granted by the European Commission to products bearing the AOC quality mark. The question now arises: what is the protection granted to products which benefit from the PDO label?
Designation of origin and the EU
The PDO label is part of the EU’s quality policy which aims to protect the names of specific products in order to promote their unique characteristics linked to their geographical origin and traditional know-how. The aim of this policy: to allow consumers to choose with confidence the products they consume and to distinguish between quality products while helping producers to better market their products. The question arises: what is the scope of the protection afforded by the protected designation of origin?
The Court of Justice of the European Union, on December 17, 2020, in the Morbier judgment , ruled on the extent of the scope of the protection granted by the protected designation of origin.
The dispute opposed the interprofessional union for the defense of Morbier cheese to the Livradois cheese company. The union criticized the Livradois cheese company for infringing the protected designation “Morbier” as well as for committing acts of unfair and parasitic competition by manufacturing and marketing a cheese which resumes the visual appearance of the products covered by the ‘Morbier’ PDO. According to her, the aim of this act is to create confusion between the products covered by the PDO “Morbier” and the products of the Livradois company.
At the end of the case the union appealed in cassation point in support of its appeal it maintains “that an appellation of origin is protected against any practice liable to mislead the consumer as to the true origin. of the product ”and that the Court of Appeal should have investigated whether the practices of the Livradois company, and in particular the copying of the“ ash ray ”, were liable to mislead the consumer as to the true origin of the product.
On the contrary, the Livradois cheese company considers that the PDO does not prohibit other producers from producing and marketing similar products when they do not suggest that they are holders of the PDO designation, but that it only protects products from a delimited territory.
The protected name
The preliminary question put by the French Court of Cassation is as follows: “ Should Articles 13, paragraph 1, respectively [of Regulations Nos 510/2006 and 1151/2012] be interpreted as meaning that they only prohibit the use by a third party of the registered name or should they be interpreted as meaning that they prohibit the presentation of a product protected by an appellation of origin, in particular the reproduction of the form or of the appearance characterizing it, likely to mislead the consumer as to the true origin of the product, even if the registered name is not used? ”. More simply, the question arises as to whether the production and marketing of products which reproduce the physical characteristics of a product protected by a protected designation of origin constitutes a practice liable to mislead the consumer as to the true origin. of the product ?
It comes down to wonderingon whether the imitation of a product protected by a PDO is likely to constitute a violation of this name even though the name is not included.
First, the European judges come back to the interpretation of Articles 13, paragraph 1, respectively of Regulations No. 510/2006 and 1151/2012 . It emerges from these provisions that the protected names are protected against multiple acts, not only are prohibited the uses by thirds of the protected name. Indeed, their fields of application are much wider: “ they prohibit the reproduction of the shape or appearance characterizing a product covered by a registered name when this reproduction is liable to mislead the consumer as to to the true origin of the product ”, ie the consumer is led to believe that the product is covered by the protected name.
Secondly, the CJEU ruled on the subject matter of the protection granted by Articles 13, paragraph 1, respectively of Regulations Nos. 510/2006 and 1151/2012. It emphasizes that “the registered name and not the product covered by it “. It follows from this statement that it is not intended to prohibit the use of manufacturing techniques or the reproduction of one or more characteristics indicated in the specifications of a product covered by a designation of protected origin.
However, it should be noted that a PDO identifies a product as originating in a specific place. PDOs are therefore protected as it designates a product that has certain qualities or certain particular characteristics. We cannot completely separate the PDO and the product covered by it.
In addition, Articles 13, paragraph 1, respectively of Regulations Nos 510/2006 and 1151/2012 provide that “ The registered names are protected against […] any other practice liable to mislead the consumer as to the true origin of the product . “, This means that the list of these articles is not exhaustive and that it would be possible to include in the protection the form or the appearance of the product covered by the PDO. In order to benefit from that protection, it would not be necessary for the name of the product in dispute to contain the PDO, but only for it to mislead the consumer as to the true origin of the product in question.
It is therefore within the discretion of the courts to determine whether an element of the appearance of the product covered by the registered name constitutes a “ reference and particularly distinctive characteristic ” of the product in question, an element of which reproduction would lead the consumer to believe that the product is the one covered by the registered name. Judges should refer to the perception “ of an average European consumer, normally informed and reasonably attentive and informed ” to know whether or not there was an act which would go against the protection afforded by the name.
Thus, the CJEU enshrines the assessment of all the relevant factors of reproduction and appearance as, in this case, with the characteristic black groove of the PDO “Morbier” which can mislead the consumer and will beyond the simple denomination of the PDO.
The European Union goes further than the simple “PDO” indication, a “geographical indication” can be added to product names if they have a link with the place of production. The EU’s geographical indications system protects product names originating in specific regions. It makes it possible to highlight products which have specific qualities or which enjoy a reputation linked to the territory of production. Recognized as intellectual property, geographical indications play an increasingly important role in trade negotiations between the European Union and other countries.
“this appellation of origin or this geographical indication confers on the person authorized under the applicable law to exercise the rights arising therefrom the right to prohibit the use of a subsequent mark. “
In 2015, the European legislatorwished to increase the protection granted to protected designations and geographical indications. The 2015 directive was adopted, on December 16, 2015 / 2436 approximating the legislation on trademarks. A list of “ absolute grounds for refusal or invalidity ” is provided for in Article 4 of this directive, it is notified that “ Are refused registration or are likely to be declared void if they are registered […]
trademarks which are likely to deceive the public, for example, as to the nature, quality or geographical origin of the product or service ”.
This means that, from now on, the national intellectual property offices have the obligation to refuse the registration of all the marks which infringe a geographical indication taken in the broad sense, that is to say that this includes as much the PGI than PDOs or AOCs.
Another ground for refusing to register a trademark has been introduced to protect geographical indications, but unlike the one mentioned above, the latter is relative. It is provided for in Article 5 of Directive 2015/2436: “ A mark is refused for registration or, if it is registered, is liable to be declared void” in both cases following: either when “an application for an appellation of origin or geographical indication had already been submitted […] before the date of the application for registration of the mark or before the date of the priority invoked in the ‘support of the request’ or if “such appellation of origin or geographical indication confers on the person authorized under the applicable law to exercise the rights arising therefrom the right to prohibit the use of a later mark. ”. This implies that it is not possible to register a mark which would infringe an earlier geographical indication and that any person authorized to exercise their right over an earlier GI can file an opposition or bring an action against a later mark.
The protection granted under GIs is broader than that of trademarks because it makes it possible to oppose a subsequent trademark even if the sign is not identical or similar. This means that a mere mention of the GI is sufficient to prohibit a sign. What infringements are sanctioned? Commercial uses, whether direct or indirect, usurpation, imitation or evocation, are prohibited, even if the true origin of the product or service is indicated. False or misleading indications as to the provenance, origin, nature or substantial qualities of the product are also penalized. Finally, the legislation leaves a rather wide margin of interpretation to the courts to determine which are the situations which would violate GIs because all practices likely to mislead the consumer as to the true origin of the product can be sanctioned. For example, this led the CJEU to recognize, in a judgment of June 7, 2018 that marks which had conceptual similarities with GIs could be penalized. In this case, the term “Glen”, often used in Scotch Whiskey brand names, has been recognized as being able to directly refer to the name “Scotch Whiskey”. According to the European judges, this led to misleading the consumer as to the true origin of the Glen Buchenbach Whiskey which came from Germany.