« It looks like Morbier, as a black stripe like Morbier… But it’s not Morbier »
The European regulations on the protection of Protected Designation of Origin (PDO) clearly state that third parties are not allowed to use protected denominations to refer to products that do not conform to the PDO’s specifications.
However, as consumers, we know that a product’s name is not necessarily the only marker to look for when buying: the visual characteristics of a product can also play a role in our choice.
In these circumstances, one can wonder if using the visual characteristics of a product protected by a PDO, without using the actual registered name, constitutes a prohibited practice.
The Court of Justice of the European Union (CJUE) had to settle a matter on this question between the Société Fromagère du Livradois (the Livradois Cheese Company, here “the Company”) and the Syndicat interprofessionnel de défense du fromage Morbier (the Morbier cheese inter professional Union, here “the Union”).
The Company produces a cheese with a black stripe, like Morbier, but does not fall under this designation as the company is not located in the area in which the Morbier designation is authorized. The Company thus call this cheese Montboissiée du Haut Livradois.
In 2013, the Union, disturbed by this matter, started legal proceedings against the Company, explaining that the Company was going against the PDO rules and was engaging in unfair competition by selling cheese that looked like Morbier, protected by the PDO.
The Paris High Court, followed by the Paris Court of Appeal, dismissed these proceedings. They deemed that the PDO aims at protecting the designation of a product, not its appearance or legal characteristics. So by using a different name for a cheese with the same characteristics as Morbier, the Company could not be considered as guilty and was not going against the PDO rules.
The Union decided to push things further and went to the Court of Cassation, which then ponders on the extent of the PDO protection. The Court of Cassation goes to the CJEU in order to determine how the European regulations on PDO protection could be interpreted on this matter.
The CJEU settled in its decision from the 7th of December 2020 that these regulations not only prohibit the use by third parties of a protected designation, but also cover other prohibited actions. The Court also pinpoints that the PDO and the product protected by it are closely linked. So, replicating the shape or appearance of a product protected by a PDO can then by forbidden by these regulation, if this leads to the consumer being mistaken on the product’s origin.
The matter will now again be dealt with by the Court of Cassation, which will have to determine if replicating the Morbier visual characteristics, and especially the black stripe as mentioned in the specifications, could lead to the consumers being mistaken on the origin and nature of the product.
If it appears that the consumer may be lead to think, by seeing the cheese produced by the Company, that it is Morbier, then the damage against the PDO will be characterised.
The CJEU position seems in favour of the PDO protection. This settlement is likely to have major practical consequences, as producing and selling any product that replicates the visual characteristics of a protected product could be prohibited. The producers of protected products will then have a strengthened protection.