Background of the case

The Société Fromagère du Livradois SAS, manufactured “Morbier” cheese without mentioning the Protected Designation of Origin (PDO) until 11 July 2017. It was then replaced by the name “Montboissié du Haut Livradois”. In August 2013, the Syndicat interprofessionnel de défense du fromage Morbier (hereinafter the Syndicat), brought an action against the aforementioned company for having committed acts of unfair and parasitic competition by producing and marketing a cheese with the visual appearance of the product protected by the PDO “Morbier”, in order to create confusion and take advantage of the reputation of the image associated with it without having to comply with the specifications of the designation of origin, requesting the cessation of the use of the PDO “Morbier” for products not covered by the latter or any other practice that could create an erroneous impression about the origin of the product, and especially any use of a black line separating the cheese into two parts (which is an essential characteristic of the cheese protected by a PDO).

These claims were rejected in first and second instance, where it was not considered that the marketing of a cheese with similar characteristics (mentioned in the DPO specification) to those of the protected cheese in question was unlawful. That judgment was finally appealed on Cassation before the Cour de Cassation, which subsequently referred the following question to the EUCJ for a preliminary ruling:

Reference for a preliminary ruling and decision of the European Union Court of Justice

The Cour de Cassation arises the following question:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?’

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

However, when we are dealing with an element of the appearance of the protected product, it is necessary to assess whether that element constitutes a baseline characteristic which is particularly distinctive of that product so that its reproduction may, in conjunction with all the relevant factors in the case in point, lead the consumer to believe that the product containing that reproduction is a product covered by that registered name. To this end, it is necessary to take into account, on the one hand, the consumer’s perception and, on the other hand, the relevant factors of the case (the way the product is displayed, packaged…).

Therefore, it will be up to the referring body to determine whether the horizontal black line, along with the elements surrounding the case and the perception of the average consumer, are sufficient to create confusion as to the origin of the protected cheese.

Judgement of the European Union Court of Justice dated 17 December 2020. Case C-490/19.