‘Swiss Emmentaler’ protected as denomination of origin, despite lack of EU protection

Italy

On March 17 2012 the Specialised IP Division of the Court of Milan issued a landmark decision concerning the protection in Italy of the Swiss protected designation of origin (PDO) Emmentaler/Emmental Svizzero (‘Swiss Emmentaler’).  

The court found that the denomination at issue should be protected in Italy - even though it is not protected at the EU level - on the basis of the 1951 Stresa Convention, which concerns cheese denominations. The court held that the convention was valid and binding on Italy in its relationships with Switzerland, which is not a member state of the European Union.

The Court of Milan pointed out a trend in EU case law whereby, under Article 351 of the Treaty on the Functioning of the European Union (formerly Article 307 of the Treaty Constituting the European Community), treaties previously signed between one or more EU member states (in this case, Italy) and a third country (here, Switzerland) are applicable even when they conflict with provisions of the treaty and related EU legislation (see Commission of the European Communities v Sweden (Case C-249/06); Attorney General v Burgoa (Case C-812/79); Commission of the European Communities v Portugal (Case C-84/98); Budéjovický Budvar, národní podnik v Rudolf Ammersin GmbH (Case C-216/01); and Commission v Italy (Case C-286/96) - this last case actually involved the Stresa Convention).

On this basis, the court also dismissed the defendants’ request to refer a question to the ECJ for a preliminary ruling on the EU provisions on PDOs and protected geographical indications. The defendants were a Swiss manufacturer and Italian importers and resellers which marketed their cheese as ‘Emmentaler’ or ‘Emmental Swizzero’, even though it did not comply with the Swiss regulation on the use of this denomination.

Under the Stresa Convention, it is possible to market cheese under the denominations ‘French Emmental’ or ‘Bavarian Emmental’ as long as:

  • the cheese has been produced in France or Germany, respectively; and
  • it is clearly presented as originating from those countries, rather than Switzerland.

Conversely, cheese referred to merely as ‘Emmental’, ‘Emmentaler’ or ‘Emmentaler Switzerland’ can be marketed in a contracting country only if it has been manufactured in Switzerland in compliance with the rules set forth by the Swiss authorities. 

The court clarified that the convention itself makes reference to the legislation of the country from which a denomination of origin derives in order to determine whether such denomination can be lawfully used. Consequently, to be sold in Italy under the denomination ‘Emmental Switzerland’, a cheese must have been produced according to the rules regulating the Swiss PDO, and such rules are not overridden by those set forth in the Codex Alimentarius, which lacks binding force. 

The court thus explicitly recognised that the Consortium Emmentaler Switzerland had the right to file an action in Italy to stop the unlawful use of the denomination ‘Emmental Switzerland’ and to seek compensatory damages for injury to its reputation and loss of advertising investment. In this regard, the judgment expressly referred to Article 2601 of the Italian Civil Code, which recognises the right of manufacturers’ associations to file suit in order to stop acts of unfair competition which may jeopardise the interest of their members, and Article 10ter of the Paris Convention for the protection of Industrial Property, in addition to the Swiss rules on the basis of which the consortium was established.

There is no agreement between the European Union and Switzerland to protect the denomination ‘Emmentaler’ at the EU level, although negotiations are ongoing. In May 2011 the denominations ‘Gruyère’ and ‘Sbrinz’ were recognised at the EU level under Enclosure B of the Stresa Convention.

In Budĕjovický Budvar, národní podnik v Rudolf Ammersin GmbH (Case C-478/07), the ECJ stated that the EU regulation on PDOs:

 “precludes the application of a system of protection laid down by agreements between two member states, such as bilateral treaties, which confers on a designation, recognised under the law of a member state as constituting a designation of origin, protection in another member state where that protection is actually claimed despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation.

This statement has been unanimously criticised by Italian scholars - see Galli, “Globalizzazione dell'economia e tutela delle denominazioni di origine dei prodotti agro-alimentari” (Riv dir ind, 2004, I, 60 e ss, page 76), according to which this interpretation contradicts the TRIPs agreement; Vanzetti-Di Cataldo, “Manuale di diritto industriale” (Milano, 2009, page 350), which states that such protection should be applicable even where there is no registration; Capelli, “Dir comm scambi internaz” (2010, 447 e ss), which highlights that no provision of the treaty gives exclusive jurisdiction to the European Union in such matters.

Cesare Galli, IP Law Galli, Milan

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