EU law stipulates that the use of figurative marks on agricultural product packaging must not suggest that the product is associated with another geographical area, and thereby unfairly appear to be covered by a protected designation of origin. Such labelling is likely to mislead consumers.
Read attorney Hans Sønderby Christensen’s article published on Wednesday, August 14, on Jyllands-Posten’s website here or download it as a PDF here.
The European Court of Justice recently ruled on the EU legal rules for the protection of registered designations of origin for goods. The purpose of the rules is to benefit the rural economy and ensure a level playing field for producers. In addition, the rules ensure that consumers have clear and concise information about the origin of the products. The rules on registered designation of origin only cover products and foodstuffs where there is a connection between the product’s characteristics and its geographical origin. The European Court of Justice ruled that a product that is not registered with a designation of origin may infringe the rules when figurative marks suggest that the product enjoys origin protection. The European Court of Justice also concluded that the rules apply to non-registered producers who use such a suggestion, even if they are actually based in the region to which they refer. The decisive factor in these cases is the lack of registration.
The case arose from a dispute between Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, (the Regulatory Council for the Protected Designation of Origin Queso Manchego), hereinafter “the Regulatory Council” and the opposing party Industrial Quesera Cuqurella SL and Juan Ramòn Cuquerella Montagud, hereinafter IQC. The latter – IQC – as a producer, had used labels for marketing and identification of three different cheeses that were not covered by the protected designation of origin “queso manchego”.
The case was brought in the first instance before the Spanish courts with the claim that it should be established that the labels used by IQC on the cheeses “Adarga de Oro”, “Super Rocinante” and “Rocinante” were not covered by the protected designation of origin “queso manchego”, and that the expressions “Quesos Rocinante” implied an infringement of the protected designation of origin “queso manchego”, as the labels and expressions constituted an illegal suggestion of the protected designation of origin.
The court acquitted IQC, as it did not find that the signs and designations used for marketing were phonetically or graphically similar to “queso manchego” or “la Mancha”. In addition, the court did not find that the designation “Rocinante” or the image of the literary figure “Don Quijote de la Mancha” could suggest that the cheeses were covered by the protected designation of origin “queso manchego”.
The decision was then appealed to the Audiencia Provincial de Albacete (the regional court in Albacte, Spain). The court found that the use of the figurative marks used in the form of landscapes and figures only made the consumer think of the La Mancha region and not necessarily of the cheese that is covered by the protected designation of origin “queso manchego”.
The Regulatory Council appealed the decision to the Tribunal Supremo (the Supreme Court of Spain), which initiated a request for a preliminary ruling from the European Court of Justice. The referring court asked the European Court of Justice to rule on whether the protection of the designation of origin can be infringed by designations that have graphic, phonetic or conceptual similarity with the protected designation of origin, or whether infringement can occur simply by using figurative marks that suggest the designation of origin.
The European Court of Justice referred to the fact that national courts must take a holistic view when interpreting the EU legal provisions. When interpreting the rules on registered designations of origin for goods, the courts must therefore not only take as their starting point the wording of the provisions, but also take into account the context in which the provision is included, and the objectives sought to be achieved by the rules.
In this connection, the European Court of Justice ruled that the EU legal rules protect registered designations against any suggestion, regardless of whether the product’s actual origin is indicated, or whether the protected designation is accompanied by expressions such as “imitation” or the like. The European Court of Justice further stated that the protection of registered designations also covers cases where figurative marks are used which may suggest a geographical designation. The decisive criterion is then whether the signs used lead the consumer, when he or she sees the product’s name, figurative mark or the like, to think of the product to which the protected geographical designation applies.
The European Court of Justice thus established that the very wording of the EU legal rules does not limit the scope of protection to only cover designations of products that are covered by the wording. The protection covers any suggestion, regardless of whether this is done by text or figurative marks.
The conclusion was therefore that the EU legal rules, which protect registered designations, also cover cases where the suggestion of a registered designation exists through the use of figurative marks. In addition, the very use of a figurative mark that suggests a geographical area that is associated with a designation of origin may constitute a suggestion that the product is covered by this designation of origin. When examining whether the rules have been complied with, the national court must take into account the consumer’s expected reaction, as the essential factor is whether the consumer, as a result of the figurative marks, associates the products with the geographical area in question. In other words, the national court must assess whether the connection between the figurative marks and the registered designation is so coincidental that the consumer associates the product with the protected designations of origin. The EU legal rules are violated if the use of figurative marks may cause the product to be potentially associated with a registered designation of origin and thus with a specific geographical area.
The judgment is thus relevant for companies that produce agricultural products, as they must ensure that they do not use signs or writing in their marketing of the products that may unfairly indicate that the product originates from an area with a protected designation of origin. In addition, producers who are registered with a protected designation of origin can, based on the judgment, demand that producers who violate the rules must now follow the court’s practice. The interpretation adopted by the European Court of Justice is due to the fact that it wants to accommodate the purpose of the EU legal rules, thereby ensuring that consumers have clear, concise and credible information about the origin of the products.
