PGI “Canard à foie gras du Sud-Ouest” prohibits the use of “Sud-Ouest” on frozen food prepared with duck fat

In a new evocation case (RG n° 21/16284), the Paris Court of Appeal has found that packaging of frozen food with such word elements as “Sud-Ouest”, “cooked with duck fat” and a duck picture are infringing the protected geographical indication (PGI) “Canard à foie gras du Sud-Ouest” (Duck with foie gras from the South West).

Background

As its name indicates, “Canard à foie gras du Sud-Ouest (Chalosse, Gascogne, Gers, Landes, Périgord, Quercy)” is a French PGI for duck from the South-West of France. According to its registration documents, the PGI covers the meet itself, as well as certain meat products, such as foie gras.

Cité gourmande (‘defendant’), a company from the South-West of France, commercialises ready-cooked potato side dishes under the umbrella brand “Pom Bistro”. According to the defendant’s web-site, this line “draws its inspiration from the French culinary tradition and its terroirs, which it highlights in each of its recipes”.

Among others, the Pom Bistro brand includes two products, “Frites du Sud-Ouest cuites dans la Graisse de Canard” (Southwestern fries cooked in duck fat) and “Rissolées du Sud-Ouest cuisinées à la Graisse de Canard” (Southwestern hash browns cooked in duck fat). Besides the product names, the original packaging (see above and here) also included an image of a duck and phrases such as “the taste of terroir” (terroir being one of the key elements behind the protection of geographical indications).

Ruling

For the producers of PGI “Canard à foie gras du Sud-Ouest” (‘plaintiff’), this represented an infringement of their rights to PGI under Art. 13(1) Regulation (EU) No 1151/2012. First the Paris first instance court, then the Paris Appeal Court sided with the plaintiff, but limited the infringement to points (b) and (d) of said provision.

The main issue that the Paris Appeal Court had to address was the extent to which Art. 13(1) applies to products that are not covered by a GI. The defendant argued that potatoes are not comparable to duck meat and that the use of “Sud-Ouest” was merely descriptive of the potatoes’ origin.

According to the Paris Appeal Court, only Art. 13(1)(a) (‘direct and indirect commercial use’) includes a limitation as to the type of products: it applies in respect of products not covered by the GI where those products are comparable to the products registered under the GI.

In turn, Art. 13(1)(b) (‘misuse, imitation or evocation’) and Art. 13(1)(d) (‘any other practice liable to mislead the consumer as to the true origin of the product’) do not include any mention of comparable products: hence, they are broader in scope and could also be applicable to non-comparable ones.

For the Paris Appeal Court, duck fat is a product that is assimilated to duck meat. Duck fat is obtained when cooking the duck and is sold separately. The packaging elements of the potatoes (“Sud-Ouest”, “cooked with duck grease”, a duck image) visually encourage the consumer to associate Sud-Ouest with duck fat and to establish a spontaneous and immediate connection with the PGI (that is, there is evocation). This has also the effect of misleading the consumer as to the true origin of the product and of taking undue advantage of the reputation of the products covered by the PGI.

Hence, infringement under both Arts. 13 (1)(b) and (d) was established.

Comment

Until now, the evocation cases before the Court of Justice of the European Union (CJEU) have covered identical products and never discussed whether it would be applicable to non-comparable ones.

In C-4/10 and C-27/10 (which did not specifically concern the interpretation of evocation), the CJEU explained that comparable products have common objective characteristics and are consumed, from the point of view of the relevant public, on occasions which are largely identical. Furthermore, they are frequently distributed through the same channels and are subject to similar marketing rules.

The question remains as to how comparable are “duck meat” and “potatoes fried on duck fat”. After all, the mental connection that is required for evocation to occur has to be with the PGI, not with a derivative product.

In the case at hand, the PGI specifications extensively describe different products that are derived from duck meat, but the fat itself is not mentioned there as a separate product.

In the opinion of this Kat, it would have been advisable to at least follow the approach suggested by Advocate General Pitruzzella in Morbier: in the interests of legal certainty, only those elements that distinctively appear in the specifications shall be considered when deciding on evocation.

Other conducts shall be pursued under Art. 13(1)(d) (‘any other practice liable to mislead the consumer as to the true origin of the product’) so to evaluate whether the consumer is indeed misled.

Image source: https://offers.shopmium.com/fr/n/les-accompagnements-de-pomme-de-terre