The use of figurative signs and words that evoke a geographical area which is associated with a protected designation of origin may constitute an unlawful evocation of the latter. This was the CJEU’s conclusion in its judgment of 2 May 2019 concerning a legal dispute about the protected designation of origin for Manchego cheese (C-614/17).

Background

The Plaintiff is the Foundation responsible for managing the Protected Designation of Origin Queso Manchego (Foundation), whose purpose is primarily to manage and protect this designation of origin. The Defendant is Industrial Quesera Cuquerella SL (IQC), which, for marketing purposes, uses labels on three of its cheese products that show an illustration of a rider resembling the typical depictions of Don Quixote de la Mancha, a bony horse and landscapes with windmills and sheep, as well as the words “Quesos Rocinante”. This is a reference to the novel “Don Quixote de la Mancha” by Miguel de Cervantes, with “Rocinante” being the name of the horse ridden by Don Quixote.

The Foundation therefore brought an action seeking a declaration that the labels used to market the three cheeses not covered by the protected declaration of origin “queso manchego” and the use of the aforementioned words give rise to an infringement of the protected designation of Manchego cheese. In the Foundation’s opinion, the illustrations and words constituted an unlawful evocation within the meaning of Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

The Spanish courts of first and second instance took the view that the labels in question evoked the region of La Mancha, but not necessarily the cheese covered by the protected designation of origin. The Supreme Court of Spain, which heard the case, ultimately referred the matter to the CJEU for clarification of the legal questions raised.

Decision

In its judgment, the CJEU found that a registered name can be evoked through the use of word or figurative elements. According to the CJEU, the Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs protects against “any evocation”. The CJEU stated that the decisive criterion is ultimately whether a word or figurative element is capable of triggering directly in the consumer’s mind the image of the product whose designation is protected. However, the CJEU ruled that it is for national courts to assess such matters on a case-by-case basis.

According to the judges in Luxembourg, these findings would also apply if the word or figurative elements were used by a producer established in the area referred to, but whose products, which are similar or comparable to those protected by the designation of origin, are not covered by it. In their opinion, the Regulation does not provide for any special protection for such producers.

Finally, the CJEU further defined the concept of the “average consumer who is reasonably well informed and reasonably observant and circumspect”, stating that this refers not only to consumers of the Member State in which the product in question is made, but in fact to all European consumers. According to the CJEU, this is the only way to guarantee effective and uniform protection of registered names against evocations throughout the territory of the European Union.

Comment

In its decision, the CJEU addresses in detail the concept of evocation in European law on trade marks and other signs, ultimately applying a broad interpretation of this. According to the wording of Regulation (EC) No 510/2006 and the reference to the “effet utile” principle, the judges primarily invoke parallels to the Spirits Regulation. In this context, the CJEU only recently found that for the purposes of determining what is meant by the term “evocation”, the decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected (judgment of 7 June 2018, Scotch Whisky Association, C‑44/17; see also our posts dated 7 June 2018 and 15 April 2019). With its decision, the CJEU is thus continuing its consistent line of rulings to date.

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