“Cacio Romano” does not infringe PDO “Pecorino Romano”, says Italian Supreme Court

With this Kat’s feed being flooded with the news of the ruling in “Pecorino Romano” v. “Cacio Romano”, she could not help but dive into the judgment herself.

The case saw the Consortium of producers of protected designation of origin (PDO) “Pecorino Romano” acting against Formaggi Boccea, an Italian cheese producer, which owns “Cacio Romano” trade mark.

Background

PDO “Pecorino Romano” is a hard and cooked cheese made from sheep's milk. The cheese was granted its PDO status in 1996. The production area of PDO “​​Pecorino Romano” is within the entire territory of Lazio (including the city of Rome) and Sardinia regions, and within the province of Grosseto in Tuscany.

In Italian, the word “pecorino” is both a noun and an adjective, which derives from pecora (ital. sheep) and indicates a product originating from sheep’s milk. Several Italian sheep milk cheeses bear this name, such as PDO “Pecorino Sardo” or PDO “Pecorino Toscano”.

According to its producers, the origins of PDO “Pecorino Romano” date back to the Roman Empire. Nowadays, PDO “Pecorino Romano” is notably a key ingredient in “Cacio e pepe”, a pasta dish from the Roman cuisine. “Cacio” stands for “cheese” in central Italy’s dialects.

In turn, “Cacio Romano” is a figurative Italian trade mark, registered in class 29 “Milk and milk-derivative products” in 1998. According to its producer, Cacio Romano is a medium-aged sheep’s milk with a strong and intense flavour.

Supreme Court’s ruling

In 2018, the Consortium of PDO “Pecorino Romano” filed a lawsuit against Formaggi Boccea before the Court of Rome. Consortium alleged that “Cacio Romano” infringed its exclusive rights under Arts. 13 and 14 Regulation No 510/2006 on geographical indications. Consortium won at first instance (ruling no 18413/2018), but Formaggi Boccea won on appeal (ruling no 5216/2019).

Consortium appealed to the Italian Supreme Court of Cassation, which published its ruling on March 20, 2023 (decision no 7937/2022). According to the Supreme Court, “Cacio Romano” does not infringe PDO “Pecorino Romano”.

In its ruling, the Supreme Court discusses whether “Cacio Romano” may be considered an evocation of PDO “Pecorino Romano”. Under Art. 13(1)(b) Regulation No 510/2006, a registered name (i.e., “Pecorino Romano”) shall be protected against 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.

Within the same line of reasoning (and building on the same arguments), the Supreme Court also analyses whether “Cacio Romano” should be invalidated pursuant Art. 14 (1) Regulation No 510/2006. According to Art. 14(1), a trade mark that infringes a PDO under Art. 13(1) and that is “relating to the same class of product” as the PDO-protected product, shall be invalidated.

The Supreme Court confirms the appreciation of the Rome Appeal Court that the two cheeses are, in fact, not within the same class of product. To reach this conclusion, the Supreme Court turns itself to the specifications of the PDO “Pecorino Romano”.

Specifications is a document, which is submitted as part of the application for registration of a PDO, and which describes in detail the methods and the area of its production.

According to the Italian Supreme Court, specifications define the scope of protection of PDO “Pecorino Romano”. There, PDO “Pecorino Romano” is described as an aromatic and spicy, hard cheese, used essentially in grated form. This is unlike “Cacio Romano”, which is a sweet, semimature cheese that cannot be grated and is therefore used only as a table cheese. Consequently, concludes the Supreme Court, the two cheeses are not of the same class of product.

To sustain this line of reasoning, the Italian Supreme Court cites three cases of conflict between a PDO-protected cheese and a trade mark that reached the Court of Justice of the European Union (CJEU). In all three cases (namely Cambozola, Parmigiano Reggiano, and Queso Manchego), sustains the Italian Supreme Court, the conflict arose between cheeses “having similar characteristics, [that is], depending on the case, the same consistency, the same seasoning, the same processing method”.

Moreover, according to the Italian Supreme Court, those CJEU rulings on evocation, which are based on Regulation (EU) No 1308/2013 are irrelevant: Regulation (EU) No 1308/2013 governs geographical indications for wines, and not for cheeses. The Supreme Court disregards the CJEU’s conclusion in Champanillo, whereby evocation is not limited to comparable or similar products.

Consortium’s appeal is thus rejected.

Comment

Even this evocation-sceptical Kat is confused by the Italian Supreme Court’s decision. Nothing in the wording of Art. 13(1)(b) Regulation No 510/2006 indicates that evocation is limited to cheeses of the same consistency and taste, as those covered by the specifications.

The EUIPO does require proximity between goods concerned (and two sheep milk cheeses would certainly be in proximity). However, national courts of other EU Member States have recently found evocation between PDO “Champagne” and wedding services, or between PDO “Champagne” and restauration services. What is more, even in the Cambozola case, which is cited by the Italian Supreme Court, the two cheeses were not identical: Cambozola is, in fact, a combination of Gorgonzola and Camembert.

While the line with evocation should certainly be drawn, this Kat doubts that denying protection because of differences in cheese taste is the way to proceed.