Protecting designations of origin

Gorgonzola

In the case of Consorzio per la Tutela del Formaggio Gorgonzola v Kaeserei Champignon Hofmeister GmbH & Co. KG, Eduard Bracharz GmbH the Court held that the rules on free movement of goods must not prevent Member States from protecting designations of origin and that responsibility rests with the national courts as to the implications for trade marks registered before a designation was granted such protection.

The designation “Gorgonzola” had been protected in Austria since 1951 under international conventions and is also protected under Community Law in terms of Commission Regulation (EC) No. 1107/96 concerning the registration of geographical indications and designations of origin (this Regulation was adopted under a procedure laid down in Council Regulation (EEC) No. 2081/92 which is the basic Regulation protecting geographical indications and designations of origin of agricultural products and foodstuffs).  Since 1983 a soft cheese manufactured in Germany had been sold in Austria under the trade mark “Cambozola”.

The Consorzio per la Tutela del Formaggio Gorgonzola (Consortium for the protection of Gorgonzola cheese) applied to Commercial Court in Vienna for an order prohibiting the marketing of the cheese in Austria under that name and asking for cancellation of the “Cambozola” trade mark.  The case was referred to the Court of Justice for a preliminary ruling as to whether such a measure could be adopted without infringing the Community rules on the free movement of goods following Austria’s accession to the European Union.

Regulation 2081/92 contains specific provisions on the relationship of names registered under the Regulation and trade marks; the purpose of the provisions is not to allow the continued use of trade marks.  However, there are exceptions. “Evocation” as referred to in Article 13(1)(b) covers a situation where the term used to designate a product incorporates part of a protected designation so that when the consumer is confronted with the name of the product, the image triggered in the consumer’s mind is that of the product whose designation is protected.

The Court concluded that the term “Cambozola”, used for a cheese, may be regarded as an evocation of the designation “Gorgonzola”; the fact that the “Cambozola” packaging clearly stated the true origin of the product was irrelevant.  Since “Cambozola” fell within a set of circumstances in which registered names were to enjoy protection, it had to be determined whether the conditions in the Regulation were satisfied so as to allow the continued use of an earlier trade mark.

However, the Court observed that it was for the national court to determine whether the requisite conditions were satisfied for allowing use of the trade mark “Cambozola” to continue, despite the fact that it was an evocation and as such in principle prohibited.  That trade mark was registered before the entry into force of the Community protection of the designation “Gorgonzola”.  If its use was to be allowed to continue, its initial registration must have been made in good faith and its use must not be liable to deceive the public.  The Court maintained that the application of those criteria was outwith its jurisdiction.  However, it did state that the fact that there is an evocation did not per se mean that consumers were likely to be deceived.

Feta

In Denmark, Germany and France v Commission the Court annulled a Community regulation which protected the name “Feta” in favour of a Greek cheese but to the detriment of cheeses produced in other Member States of the EU.  This case also related to a protected designation of origin contained in Commission Regulation No. 1107/96.  In terms of the basic Regulation 2081/92 “generic” names cannot be registered and enjoy protection as designations of origin; this means that the name of an agricultural product or foodstuff which, although relating to the place or the region where it was originally produced or marketed, has become the common name of an agricultural product or a foodstuff cannot be registered.  In establishing whether a name has become generic, account has to be taken of the situation in the Member State from which the name originates and in the areas of consumption, the existing situation in other Member States and the relevant national and Community laws.

Before registering “Feta” cheese in 1996 as a protected designation of origin, the Commission carried out research, but concluded that “Feta” had not become a common name for “salted white cheese traditionally produced in Greece from sheep’s milk or a mixture of sheep’s milk and goat’s milk” and that it continued to evoke a Greek origin.  This decision to register “Feta” as a protected designation of origin to cover Feta produced in Greece was challenged by Denmark, Germany and France; cheese had been produced (also from cow’s milk) and legally marketed under the name “Feta” since 1963 in Denmark, 1981 in the Netherlands and 1985 in Germany.

The Court found that the Commission, unjustly, had minimised the importance to be attached to the situation existing in the Member States other than the state of origin and had considered their national legislation to be entirely irrelevant.  According to the Court, the Commission did not take account of all the factors relevant to its decision referred to above in Regulation 2081/92.  The Commission should have taken account of products legally on the market in other Member States and which have been legally marketed under that name in Member States other than the one for which a protected designation of origin is requested.  Since it necessarily followed that, when registering the name “Feta”, the Commission did not take account of all the relevant factors in determining whether in the meantime that name had become generic, the Court annulled the contested Community Regulation to the extent to which it registered “Feta” as a protected designation of origin for “Feta” cheese produced in Greece.

Copies of the judgments are available from the Society or on the Court’s website: www.curia.eu.int