Evoking protected designations of origin may be unlawful. That was the verdict of the Court of Justice of the European Union (CJEU) in a ruling from May 2, 2019 (Az.: C-614/17).
The CJEU has confirmed its position that evoking protected designations of origin may be unlawful. The Court had already expressed this view in the past year with respect to the protected geographical designation of origin “Scotch whisky”. This time the case concerned Spanish cheese instead of Scotch whisky. We at the commercial law firm GRP Rainer Rechtsanwälte can report that the CJEU decided, once again, to bolster protected designations of origin.
According to the CJEU’s ruling, the use of figurative signs that evoke a geographical area associated with a protected designation of origin may be unlawful. In the instant case, there were three types of cheese with labels evoking the fictional character Don Quixote de la Mancha. Cheese made from sheep’s milk from the Spanish region of Mancha is the subject of a protected designation of origin, but the three cheeses in question were not covered by this.
A foundation tasked, among other things, with managing and protecting the protected designation of origin brought an action against the producer of the three cheeses. It argued that the use of the labels and names constituted an unlawful evocation as defined in the regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
At first and second instance, the Spanish courts took the view that the while the images and names used to market the three types of cheese did evoke the region of Mancha where the producer is established, they did not necessarily evoke the cheese protected by the geographical designation of origin.
The CJEU held, however, that the use of figurative signs may itself amount to an evocation of a registered designation. The Court noted that the Regulation protects registered names against “any evocation”, with “any” said to reflect that it is possible to evoke something using a word element or figurative element. It went on to state that the decisive criterion for establishing whether an element evokes a registered name is whether the element in question is capable of directly triggering in consumers’ minds the product featuring this name. The Court added that it is also possible for the evocation to be unlawful if the producer is established in the region of the protected designation of origin.
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