Using a horizontal central black stripe is an evocation of PDO “Morbier”, says the Paris Appeal Court

This Kat finally got her paws on the Paris Appeal Court decision in the Morbier case (RG n°21/16539).

This case involved a dispute between the producers of a protected denomination of origin (PDO) for cheese-- “Morbier”, and the producers of Montboissié cheese, focusing on the use of a horizontal central black stripe in the latter product. The instant litigation followed a preliminary ruling of the Court of Justice (CJEU) over the interpretation of “evocation” in EU geographical indications (GI) law. The Paris Appeal Court has now affirmed that Montboissié’s use of the black stripe is unlawful, being an evocation of PDO “Morbier”.

“Evocation” is a standard of protection for EU GIs (including PDOs). Under Art. 13(1)(b) Regulation (EU) No 1151/2012, GI owners may prohibit third party’s products, if such products create a sufficiently clear and direct link with a GI in the mind of an average European consumer.

Yet, as the Kat readers will see with Morbier, relying on evocation may be an erroneous path, when a product has been established in several regions for various decades before a GI is registered.

Historical background

Morbier is a cheese, produced in the Jura Mountains in Eastern France.

According to the specifications of the PDO “Morbier”, two successive milkings were originally used for cheese production. The first curd loaf was coated with soot to protect it against external contamination before being blended with the second curd. This gave the cheese its characteristic central black line. To preserve the traditional appearance, the curd is currently cut into two halves and a vegetable charcoal is placed between them.

The “Morbier” website mentions that in the 1960s, this cheese “was discovered by hundreds of students from the École Nationale de l’Industrie Laitière (ENIL), the dairy industry school in [Jura]. Once they had completed their studies, [enchanted] by this cheese, many students returned home and started making Morbier.” This might explain how the defendants in the case started producing it 300 kms away from the Jura region.

In the 1990s, an association of morbier producers applied for registration of PDO “Morbier”. After approving the registration in 2000, French authorities transferred the file to the European Commission for an EU-wide registration. In 2002, morbier became a PDO.

Several morbier producers from outside the Jura region tried to challenge the French decision to register PDO “Morbier”. Plaintiffs included the SFL (a future defendant in the 2022 Morbier case). In 2003, the French Supreme Administrative Court declined the appeal.

According to the Administrative Court, the denomination “morbier” traditionally designated a cheese from the Jura region. It had also been used by certain manufacturers to market a cheese produced nearby the Jura, but not in other regions of France nor in other countries. Morbier was not a generic denomination.

Thus, the Court held (in 2003) that while the plaintiffs were no longer allowed to use the “morbier” denomination, “the [PDO] rules will not prevent the free movement” of non-PDO products. This meant that cheese producers outside the Jura had to rename their products, but could continue producing morbier-like cheeses. SFL, which had been making morbier cheese since 1979, renamed its cheese “Montboissié du Haut Livradois” and continued its production under the new appellation.

National proceedings

In 2013, the Association of PDO “Morbier” producers filed a lawsuit against SFL, alleging PDO infringement [see an earlier post by The IPKat here]. It alleged that the defendant manufactured and marketed the cheese, Montboissié du Haut Livradois, whose visual appearance was similar to that of the PDO “Morbier”.

The Association demanded that the defendant cease its use of a black stripe separating the two parts of the cheese. The Association did not specifically claim evocation, but relied on all prohibited activity listed in Art. 13(1) Regulation (EU) No 1151/2012. These prohibitions include direct and indirect commercial use of a registered name (i.e. Morbier), evocation, any other practice liable to mislead the consumer as to the true origin of the product.

The Paris Appeal Court rejected the Association’s claims. The Court affirmed that the PDO does not protect the appearance of a product or its characteristics as described in the specifications, but only protects the PDO’s name.

The Association appealed to the Cassation Court. It argued that in ruling that a PDO only protects its name, the Paris Appeal Court misconstrued Art. 13(1). The Cassation Court requested a preliminary ruling regarding whether the shape or appearance of the product covered by a registered name (in this case, a horizontal black stripe inside the Morbier) falls under the scope of Art. 13(1), even if the name itself is not used (case C-490/19).

Preliminary ruling

Although the request concerned Art. 13(1) as a whole, submissions to the CJEU in C-490/19 focused on evocation under Art.13(1)(b). Prior to the ruling, commentators, including this Kat, were fearful that C-490/19 would once again expand the definition of evocation.

Nevertheless, the CJEU decided to only address whether Art. 13(1)(d) “any other practice liable to mislead the consumer as to the true origin” was applicable. The ruling does not mention evocation.

According to the CJEU, Art. 13(1)(d) on misleading practices could be invoked to prohibit the reproduction of the shape or appearance characterising a product covered by a PDO. This is so where such reproduction is liable to lead the consumer to believe that the product in question is covered by that PDO. Accordingly, it is necessary to assess whether such reproduction may mislead the European consumer.

Misleading practices are better suited than evocation in such cases, as the plaintiff must prove that a consumer is actually misled into thinking that he is buying a GI-protected product. Instead, evocation allows GI owners to prohibit products even when a consumer is not misled (and one would less likely be misled solely by the image of windmills on the packaging or black lines in the cheese).

Paris Appeal Court ruling

In light of the CJEU’s preliminary ruling, the French Cassation Court returned the national case to the Paris Appeal Court for re-examination. The Paris Appeal Court delivered its ruling in November 2022.

Oddly, however, and despite the approach towards analysing misleading practices, suggested by the CJEU, the Paris Appeal Court held that a central black line is an evocation of the PDO “Morbier”.

To establish evocation, the Court considered consumer surveys submitted by the parties. According to a survey commissioned by SFL among consumers in nine EU Member States, 81% of the interviewees did not recognise the PDO “Morbier” by its picture alone. Yet, according to a survey among French consumers commissioned by the Association, 75% of the interviewees recognised PDO “Morbier” through this same picture, with 92% of them having recognised it on the basis of the line in the middle.

Together with the overall appearance of “Montboissié”, which generally reproduces other characteristics of form and appearance of the PDO “Morbier” (i.e. the circular shape of the cheese), the court found this sufficient to find evocation of the PDO “Morbier” by SFL and thus to prohibit such conduct.

Some more thoughts

GI rights are, in many ways, about reclaiming what was traditional in a given place, but have gradually expanded into other regions or even countries.

For example, in light of the PDO “Champagne”, Spanish and Italian producers had to find a new name when these countries for their products when they entered the EU. Their bubbly sparkling wines were renamed to cava and prosecco. Still, there is no consensus on to how to approach long-standing manufacturing of products outside of the GI region.

In the view of this Kat, over-expanding the definition of evocation is not the answer. As Dev Gangjee argued at a conference back in 2020 when discussing the Morbier case: imagine cava and prosecco in their early years, imagine PDO “Champagne” producers saying cava evokes champagne because it is bubbly, thereby prohibit its use?

Picture of the PDO "Morbier" is by Pierre-Yves Beaudouin and is licensed under the Creative Commons Attribution-Share alike 4.0 International license.