Court of Justice: use of figurative signs may constitute unlawful evocation of a PDO

As part of the EU quality schemes, the Protected Designations of Origin (PDOs) promote and protect the names of quality agricultural products and foodstuffs whose quality and characteristics are essentially due to their geographical origin. 

Queso manchego” is a PDO that covers cheese made in the region of La Mancha (Spain) from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of that PDO. 
'Queso Manchego' PDO

Industrial Quesera Cuquerella SL (‘IQC’) markets three of its cheeses, namely ‘Adarga de Oro’, ‘Super Rocinante’ and ‘Rocinante’, by using labels containing the following elements: 
  • Illustrations: A character resembling Don Quixote de La Mancha, a bony horse, and the landscapes with windmills and sheep. 
  • Words: ‘Quesos Rocinante’ (in English: ‘Rocinante cheeses’, whereby ‘Rocinante’ is the name of the horse ridden by Don Quixote). 
IQC's cheeses
The Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (‘the Queso Manchego Foundation’) is responsible for managing the PDO ‘queso manchego’.

On that basis, it brought an action against IQC and Mr. Juan Ramón Cuquerella Montagud in Spain seeking a declaration that the above-mentioned labels constituted an unlawful evocation of the 'queso manchego' PDO for the purpose of Article 13(1)(b) of Regulation No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. 

Legal context 

Recitals 4 and 6 of Regulation No 510/2006 state: 
(4) In view of the wide variety of products marketed and the abundance of product information provided, the consumer should, in order to be able to make the best choices, be given clear and succinct information regarding the product origin.
...
(6) Provision should be made for a Community approach to designations of origin and geographical indications. A framework of Community rules on a system of protection permits the development of geographical indications and designations of origin since, by providing a more uniform approach, such a framework ensures fair competition between the producers of products bearing such indications and enhances the credibility of the products in the consumer’s eyes.
Article 2(1)(a) of that regulation states: 
For the purposes of this Regulation:
(a) “designation of origin” means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
– originating in that region, specific place or country,
– the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and
– the production, processing and preparation of which take place in the defined geographical area.
Article 13(1) of Regulation No 510/2006 provides: 
Registered names shall be protected against:
...
(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” or similar;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; ...
Article 14(1) of that regulation provides: 
Where a designation of origin or a geographical indication is registered under this Regulation, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same class of product shall be refused if the application for registration of the trademark is submitted after the date of submission of the registration application to the [European] Commission.
Trademarks registered in breach of the first subparagraph shall be invalidated.
The questions referred for a preliminary ruling 

The Spanish courts (at first and on appeal) held that the signs and names used by IQC to market the cheeses, which were not covered by the PDO ‘queso manchego’, evoked the region of La Mancha, but not necessarily the cheese ‘queso manchego’ covered by the PDO.

Further to an appeal to Tribunal Supremo (Supreme Court, Spain), this court decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling: 

Question (1) 

Must Article 13(1)(b) of Regulation No 510/2006 be interpreted as meaning that a registered name may be evoked through the use of figurative signs? 

The CJEU pointed out that, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the legislation of which it is part. Article 13(1)(b) of Regulation No 510/2006 explicitly protects the registered names against any evocation, which can be understood as referring not only to words, but also to any figurative sign capable of evoking in the mind of the consumer products whose designation is protected.

Regulation No 510/2006 pursues, inter alia, the objective of ensuring that the consumer has “clear, succinct and credible information” regarding the origin of the product. Said objective is further guaranteed if the registered name cannot be evoked through the use of figurative signs. 

The Court noted that the decisive criterion to establish whether an element evokes a registered name is whether that element is capable of triggering directly in the consumer’s mind the image of the product whose designation is protected, which cannot exclude the possibility 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. 

The Court added that it would be for the national court to assess specifically whether the figurative signs in question are capable of triggering directly in the consumer’s mind the products whose names are registered PDOs. 

So, the answer to the first question is that Article 13(1)(b) of Regulation No 510/2006 must be interpreted as meaning that a registered name may be evoked through the use of figurative signs. 

Question (2) 

Question (2) concerned interpretation of Article 13(1)(b) of Regulation No 510/2006. The CJEU held that this provision means that the use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it. 

Specifically, the Court noted that the regulation does not provide that a producer established in a geographical area corresponding to the PDO and whose products are not protected by the PDO but are similar or comparable to those protected by it is to be excluded from its scope. Accordingly, it is for the Tribunal Supremo to establish whether there is sufficiently clear and direct ‘conceptual proximity’ between the figurative signs used by IQC and the PDO ‘queso manchego’, which refers to the geographical area with which it is associated, namely the region of La Mancha. 

Accordingly, the national court will have to satisfy itself that those figurative signs 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 that regard, the Tribunal Supremo will also have to assess whether it is necessary to consider together all the figurative and word elements which appear on the products at issue in order to carry out an overall assessment taking account of all the elements which are potentially evocative. 

Question (3) 

Must the concept of the average consumer, whose perception the national court has to refer in order to assess whether there is ‘evocation’ within the meaning of Article 13(1)(b) of Regulation No 510/2006, be understood as covering European consumers or only 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? 

The Court pointed out that the concept must be interpreted in a way that guarantees effective and uniform protection of registered names against any evocation throughout the territory of the Union.

Accordingly, the concept must be understood as covering European consumers, including 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. The Court concluded that it is for the national court to assess whether both the figurative and word elements relating to the product at issue in the main proceedings, which is made or mainly consumed in Spain, evoke the image of a registered name in the mind of the consumers of that Member State, which must, if that is the case, be protected against evocation wherever that may occur throughout the territory of the European Union. 

The full text of the judgement can be found here.
Court of Justice: use of figurative signs may constitute unlawful evocation of a PDO Court of Justice: use of figurative signs may constitute unlawful evocation of a PDO Reviewed by Tian Lu on Friday, May 10, 2019 Rating: 5

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