Parmesan is not generic for cheese, says ECJ
In European Commission v Germany (C-132/05), the European Court of Justice (ECJ) has dismissed an action brought by the European Commission against Germany. The commission alleged that Germany had failed to fulfil its obligations under Article 13(1)(b) of Council Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural and foodstuffs (now article 13(1)(b) of Council Regulation 510/2006). Article 13(1)(b) sets out that registered names shall be protected against any misuse, imitation or evocation even if the true origin of the product is indicated or if the protected name is translated.
In 2003, following a complaint filed by several economic operators, the European Commission requested that Germany give clear instructions to the authorities responsible for combating fraud to stop the marketing on German territory of cheese designated as 'Parmesan' which did not comply with the product specification for the protected designation of origin (PDO) 'Parmigiano Reggiano'.
According to the commission, the term 'Parmesan' was a translation of the PDO 'Parmigiano Reggiano' and its use constituted a breach of Article 13(1)(b) of Regulation 2081/92. The German government considered that although the term 'Parmesan' had historical roots in the region of Parma, its use was not infringing as the term had become a generic name for hard cheeses of diverse origins, either grated or intended to be grated. As the commission was not satisfied by the explanations given by the German government, it brought the present action.
The ECJ had to consider the following issues:
- the protection of compound designations;
- the infringement of the PDO 'Parmigiano Reggiano'; and
- the obligations on Germany to proceed against infringements of Article 13(1)(b).
With regard to the first issue, the commission claimed that the registration of a designation consisting of several terms confers protection both on the designation as a whole and on the constituent elements of the compound designation. Germany argued that a PDO enjoys protection only in the exact form in which it is registered and that, in the absence of a registration of 'Parmigiano', the designation 'Parmigiano' is not protected under Community law. The ECJ rejected Germany's argument, holding that questions concerning the protection to be accorded to the various constituent parts of a name are to be determined by the national courts on the basis of a detailed analysis of the facts presented by the parties.
With regard to the second issue, the ECJ first examined whether the term 'Parmesan' evoked the PDO 'Parmigiano Reggiano' under Article 13(1)(b). Referring to its Gorgonzola decision (C-87/97), the ECJ reiterated that:
- 'evocation' 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 brought to his or her mind is that of the product whose designation is protected; and
- it is possible for a PDO to be evoked where there is no likelihood of confusion between the products concerned and where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue.
The ECJ concluded that the name Parmesan must be regarded as an evocation of the PDO 'Parmigiano Reggiano' based on:
- the phonetic and visual similarity between the names Parmesan and Parmigiano Reggiano;
- the fact that the products at issue are all hard cheeses, either grated or intended to be grated; and
- the conceptual similarity between the two terms, regardless of whether the name Parmesan is an exact translation of the PDO 'Parmigiano Reggiano' or of the term 'Parmigiano'.
The court did not deem it necessary to examine the translation issue in more detail.
According to Article 13(3) of Regulation 2081/92 (now Article 13(2) of Regulation 510/2006), protected names may not become generic. If a protected designation contains a name which is considered to be generic, use of that name cannot constitute infringement. Germany argued that since 'Parmesan' had become generic, its use cannot amount to an unlawful evocation of the PDO 'Parmigiano Reggiano'.
The ECJ listed the factors which must be taken into account in assessing whether a name has become generic in a certain member state (eg, the perception of the public). However, it noted that Germany had restricted itself to providing some quotations from dictionaries and specialist literature.
Therefore, the ECJ concluded that Germany had failed to show that the name Parmesan had become generic. In particular, the ECJ found that in Germany, cheeses marketed under the name Parmesan often bear references to Italian cultural traditions and landscapes on their labels. Therefore, consumers will perceive Parmesan cheese as a cheese associated with Italy, even if it was produced elsewhere.
With regard to the third issue, the commission contended that under Articles 10 and 13 of Regulation 2081/92, Germany is bound to take on its own initiative the administrative and penal measures necessary to deal with conduct which infringes a PDO. However, the ECJ held that it is sufficient that the German legal system provides instruments that enable action against the unlawful use of a PDO (eg, unfair competition legislation or legislation on distinctive signs). This conclusion was not affected by the fact that the regulation provides that:
- member states must create or designate inspection structures; and
- these structures must take necessary action if a product does not meet the conditions set out in the product specification.
The ECJ held as follows:
"The inspection structures whose task it is to ensure compliance with the PDO specification are those of the member state from which the PDO in question comes. The responsibility for monitoring compliance with the specification when the PDO 'Parmigiano Reggiano' is used therefore does not lie with the German inspection authorities."
Consequently, the ECJ concluded that the commission had failed to establish that, by formally refusing to proceed against the use on its territory of the name Parmesan on the labelling of products which do not comply with the requirements of the specification for the PDO 'Parmigiano Reggiano', Germany has failed to fulfil its obligations under Article 13(1)(b) of Regulation 2081/92.
The decision is a welcome development to the extent that it confirms the scope of protection enjoyed by PDOs. The reasoning of the court can be understood in light of the relevant provisions on inspection structures. However, more consumer-oriented arguments, such as those put forward by the commission, might not necessarily have led to the same conclusion.
Nicolas Clarembeaux and Eleni Foscolos, Altius, Brussels
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