The protection of the “MORBIER” PDO extends to the shape and the visual / identity characteristics of the product.

[23/12/2020] The interpretation of the EU’s provisions on the protection of geographical indications and designations of origin is not easy for national judges.

Hence, the Court of Cassation refers the following question to the Court of Justice of the European Union (CJEU):

May the reproduction of physical characteristics of a product protected by a PDO constitute a practice that is liable to mislead the consumer as to the true origin of the product even if the registered name is not used, as prohibited by Article 13, §1 of Regulation No 1151/2012 (agricultural products and foodstuffs)?

Contrary to what had been decided by the Court of First Instance and the Paris Court of Appeal, the answer of the CJEU is affirmative.

Indeed, the scope of the protection of the PDO is not strictly limited to its name. Article 13 covers various acts and national courts must assess the facts on a case-by-case basis.

It has been established since the judgment issued by the CJEU concerning the PDO “Queso Manchego” that a registered name may be evoked through the use of figurative signs evoking the PDO or its geographical area.

The Court applies the same reasoning to the shape or appearance of a product insofar as they allow the consumer to establish a sufficiently close connection with the PDO.

This case is particular in that it deals with a product whose flat cylindrical shape and central, horizontal, black mark are particularly distinctive and are contained in its specification.

Accordingly, the reproached acts consisting in reproducing the visual appearance of the product must fall within the scope of protection of said PDO.

The scope of the protection of PDOs therefore extends to the shape and visual and identity characteristics of a product if that reproduction is liable to mislead the consumer, which the Court of Cassation must now assess.

While the position of the Court of Justice has been particularly favourable to the protection of PDOs / PGIs over the last years, it remains to be seen whether IP Offices will follow the same position by dismissing, at the examination stage, trademark applications whose figurative or three-dimensional elements could directly evoke an earlier PDO, its geographical area or its product.

Producers and Defence and Management Organizations should therefore watch: our staff remains at your disposal for any assistance.