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Could geographical indications (GIs) provide legal protectionbeyond the production process, but also the shape?

In a landmark ruling, the EU Court of Justice (CJEU) ruled infavour of the makers of 'Morbier' cheese, who sued a rivalcompany for producing and marketing a lookalike cheese. The rulingstates that, in certain cases, reproducing the visual appearance ofa product with a protected designation of origin (PDO) is forbiddenas it could mislead consumers.

The court said that even if the name Morbier does not appear onthe rival's product or packaging, its reproduction was liableto mislead the consumer as to the true origin of the product.

For those un-initiated into the world of cheese, Morbier is acreamy French cheese with a seam of dark ash through its middle.Produced in the Jura mountains, Morbier has enjoyed the EU'sprotected designation of origin (PDO) since 2000, with particularreference to the thin grey line through its centre.

The distinctive line came about in the nineteenth century whencheesemakers would put curd from evening production into a roundmould, cover it with edible vegetable ash overnight and then top itup from the morning milking of the cows.

Morbier's battle for its status started in 2013 when theSyndicat interprofessionnel de dfense du fromage Morbier(the Syndicat), brought an action against cheesemakerSocit Fromagre du Livradois SAS for havingcommitted acts of unfair and parasitic competition by producing andmarketing a cheese with the visual appearance of the productprotected by the PDO "Morbier", in order to createconfusion and take advantage of the reputation of the imageassociated with it without having to comply with the specificationsof the designation of origin. The Syndicat requested the cessationof the use of the PDO "Morbier" for products not coveredby the latter or any other practice that could create an erroneousimpression about the origin of the product, and especially any useof a black line separating the cheese into two parts (which is anessential characteristic of the cheese protected by the PDO).

The Syndicat lost the case and a subsequent appeal in 2017, buta referring judge then sought guidance from the Luxembourg-based EUCourt of Justice (CJEU).

On 17 December 2020 the Court of Justice of the European Union(CJEU) issued its decision.

By interpreting Art. 13(1) of Regulation No 1151/2012, the CJEUclarifies two crucial points concerning the protection of GIs inthe EU.

First of all, Article 13(1) of Regulation No 1151/2012does not prohibit solely the use by a third party of theregistered name.

Also, Article 13(1)(d) prohibits the reproduction of theshape or appearance characterizing a productcovered by a registered name where that reproduction may lead theconsumer to believe the product in question is covered by thatregistered name. In those circumstances, it is necessary to assesswhether that reproduction may mislead the European consumer, who isreasonably well informed and reasonably observant and circumspect,taking into account all the relevant factors in the case, includingthe way in which the products in question are presented to thepublic and marketed and the factual context.

The French "Cour de cassation", which had requestedthe CJEU the interpretation of Article 13(1) of Regulation No1151/2012, will now need to decide if the directions given by theCJEU suffice to decide the case (commercialization by the"Socit Fromagre du Livradois SAS""of a cheese product reproducing the visual appearance of thePDO "Morbier") based on the above-mentionedprinciples.

The CJEU considers that Article 13 is not limited to prohibitingthe use of the registered name, but has a broader scope ofprotection, which may include, among other uses, figurative signsthat may generate confusion due to the conceptual proximity.

However, when we are dealing with an element of the appearanceof the protected product, it is necessary to assess whether thatelement constitutes a baseline characteristic which is particularlydistinctive of that product so that its reproduction may, inconjunction with all the relevant factors in the case in point,lead the consumer to believe that the product containing thatreproduction is a product covered by that registered name. To thisend, it is necessary to take into account, on the one hand, theconsumer's perception, on the other hand, the relevant factorsof the case, including the way the product is displayed andpackaged.

Naturally, on the basis of the CJEU decision, it will be up tothe referring body (French Courts) to determine whether thehorizontal black line, along with the elements surrounding the caseand the perception of the average consumer, are sufficient tocreate confusion as to the origin of the protected cheese.

Despite the UK's departure from the EU, all existing UK orEU products registered under EU GI schemes will remain protected inthe UK under the UK GI schemes at minimal inconvenience to theregistered holder(s).

Although the CJEU decision is good news for owners of PDOs andGIs, its relevance before UK Court is uncertain, since CJEUprecedents are no longer binding to UK Court. Still, there is nodoubt they hold some persuasive value.

Marks & Clerk LLP has a dedicated food and drink team whohave a wealth of experience in advising businesses protect theirvaluable intellectual property rights.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.

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