From food porn to porn with food: the case of PornHub and Parmigiano Reggiano

Watching PornHub
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In times when food porn has become so ubiquitous to be almost cliché, things may get more interesting when food is actually used to advertise porn. 

This is what happened a few days ago, when PornHub [link not provided to protect innocent eyes and underage readers] launched its premium service, promptly labelled 'the Netflix of porn' [but would Netflix be happy to be associated with porn?]. 

To advertise its subscription service PornHub released the video of a couple whilst shopping at a supermarket. The video opens with the woman reminding her companion to get some cheese. The man thus suggests buying some aged 'Parmigiano Reggiano' [let's leave the issue of how this is pronounced in the ad aside, as it makes any Italian feel suddenly blue], and the woman asks him when he did become such a foodie. The man replies that "They say it's the PornHub Premium of cheese". The ad ends with the startled expression of the woman.

Apparently the woman in the video was not the only one to feel startled, as the Consorzio del Parmigiano Reggiano, ie the association of Parmigiano Reggiano producers, has threatened to sue the US adult entertainment site. 

In the relevant press release [only available in Italian], the Consorzio reveals that its legal counsels are considering legal action - apparently of a criminal nature, since that the document employs the phrase 'ipotesi di reato' - against PornHub for using without due cause the name and reputation of this Italian celebrated product, and associate it with services which are as vulgar as the reasons of such free riding. The latter is particularly apparent - explains the Consorzio - because the PornHub ad employs protected designation of origin [a quick search on TMView also shows a number of national and Community trade marks, though not the word mark 'Parmigiano Reggiano' as such] 'Parmigiano Reggiano' in lieu of the more generic term 'parmesan' which "in the US is used for several types of cheese, including those which, by associating the name to symbols like the Italian flag, are actual frauds against consumers, who are thus induced into thinking that they are real Italian products."  

For once, mice (♥) are more appropriate
than Kats to navigate
the world of Parmigiano

Besides a provision in the Italian Criminal Code, Article 517-quater, against the infringement of geographical indications of origin (which nonetheless, for how it is phrased, does not appear directly applicable in this case), Article 13 of the Quality Schemes Regulation clarifies the scope of protection available to registered names such as 'Parmigiano Reggiano'. 

Among other things, lett b clarifies that registered names shall be protected against "any misuse, imitation or evocation". With particular regard to evocation [which appears the most likely ground here], in its decision in Consorzio del Gorgonzola, the Court of Justice of the European Union (CJEU) held [para 25] that:

"'Evocation, as referred to in Article 13(1)(b) of Regulation No 2081/92, covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected."

Importantly, the CJEU also stated [para 26] that "it is possible ... for a protected designation to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue."

So could and should the Consorzio del Parmigiano Reggiano take action against PornHub? What do readers think?