According to the latest decision of the CJEU on the concept of PDO/PGI “evocation”, the use of figurative signs evoking the geographical area with which a designation of origin is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by the PDO (Queso Manchego, C-614/17).
In order to understand the importance of such ruling, this Article will take a look at the CJEU case law on the issue prior to the Queso Manchego case, showing the tendency of the Court and its possible implications for a new recent referral.
The concept of “evocation” appeared for the first time in Art. 13(1) of the now repealed Council Regulation (EEC) 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. Under this article, a PDO or a PGI shall be protected against “any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar”. This wording was then maintained in the subsequent EU regulations (Regulation (EC) 510/2006, Regulation (EU) 1151/2012 for agricultural products and foodstuffs, Regulation (EC) 110/2008 for spirit drinks, Regulation (EU) 1308/2013 for wines and Regulation (EU) 251/2014 for aromatised wines).
The peculiarity of the protection against evocation of PDO and PGI provided by EU law lies in the fact that it is not governed by the criterion of the likelihood of confusion, which presupposes that the sign that conflicts with the registered name is likely to mislead the public as to the geographical origin or the quality of the product. This is in line with the public and collective nature of geographical indications and designations of origin and reflects the intention of the European legislator to protect the traditional quality and reputation of registered names against parasitic acts rather than to protect consumers against misleading conduct.
Because of such sui generis nature, the Court of Justice has been called upon to interpret the concept of “evocation” since the outset and on several occasions since.
The Court ruled on the concept of “evocation” for the first time in C-87/97 (Gorgonzola./.Cambozola), clarifying that “evocation” covers a situation where the term, used to designate a product, incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected. The factors indicated by the Court for determining whether there is evocation, include the “phonetic and visual” similarity between the name, in addition to the similarity between the products in question.
In C-132/05 (Parmigiano Reggiano./.Parmesan), the Court enlarged the concept, stating that “evocation” may take place not only in cases of phonetic or visual similarity between the names, but also where “conceptual proximity” exists between a PDO/PGI and the term allegedly infringing the protected name. In other words, evocation may also be established on the basis of the mere “conceptual similarity” between the contested sign and the protected name, if that similarity is capable of triggering in the mind of the public the products covered by that name.
The CJEU extended the same assessment criteria set out in C-87/97 and C-132/05 to the protection of geographical indications of alcoholic beverages in C-4/10 – C-27/10 (Cognac).
In C-75/15 (Verlados./.Calvados), the CJEU clarified that the concept of “evocation” within the meaning of EU law is totally independent from the risk of confusion and occurs even if the public is not at all misled as to the true origin of the disputed product. The Court also pointed out that these criteria were intended to give the national courts guidance in their decision, being national courts those who must evaluate whether, in the specific circumstances of the case, there is “evocation” within the meaning of EU Regulations.
In C-44/17 (Scotch Whisky), the Court confirmed that neither the partial incorporation of a protected geographical indication in the disputed designation, nor any phonetic and visual similarity between the PDO/PGI and that designation constitutes an essential requirement for the purpose of assessing whether there is “evocation” within the meaning of EU Regulations, finding that, in the absence of any such incorporation or similarity, there may be evocation as a result of the simple “conceptual proximity” between the PDO/PGI and the disputed sign. However, the Court recognized that “conceptual proximity” is not as straightforward as phonetic or visual similarity. The Court identified the need to set limits to identify the concept of conceptual proximity for avoiding that the scope of unlawful evocation could go beyond what is necessary for the effective protection of registered names. In this respect, the Court ruled that there is proximity only when the associative connection between the disputed element and the protected name is sufficiently “clear and direct”.
As anticipated, in the last decision on the issue (Queso Manchego, C-614/17) the Court went further, broadening the scope of protection against evocation to figurative signs (in the national proceedings, the Spanish Supreme Court addressed whether the PDO “Queso Manchego” could be evoked by use of windmills, sheep and other images, typical of the La Mancha region). According to the Court, “evocation” within the meaning of EU regulations should be understood as referring not only to words capable of evoking a registered name (in light of a visual, phonetical or conceptual similarity), but also to figurative signs capable of evoking in the mind of the consumer the product whose designation is protected.
As pointed out by the Advocate General Pitruzzella, if the existence of a visual and phonetic similarity does not constitute an “essential condition” for establishing evocation, as established by the Court in previous cases, this means that the mental association between the ordinary product and the product covered by the name in question, required for the purpose of establishing evocation, does not necessarily presuppose the use of verbal language. An image, a symbol and, more generally, a figurative sign can, like a name, convey a concept and therefore be capable of triggering in the consumer a mental association with the protected name, which in this case will be “evoked”, not visually or phonetically, but by reference to its conceptual content.
In accordance with this reasoning and previous case law and having regard to the wording of the relevant Regulation (which use the term “any” evocation – Art. 13(1)(b) of Regulation 510/2006), the Court ruled that “evocation” within the meaning of EU law (namely, of Art. 13(1)(b) of Regulation 510/2006) must be interpreted as meaning that the use of figurative signs evoking the geographical area with which a designation of origin is associated, may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.
The decision certainly constitutes a step forward in the protection of European PGI and PDO, in line with the tendency of the CJEU to interpret “evocation” widely and in line with the broad protection granted to PGI/PDO by the EU legislature.
In this constantly evolving case law, it will be interesting to see how the CJEU will rule on a recent request for preliminary ruling sent by the French Cour de Cassation (Morbier, C-490/19). The French Court asked the CJEU to clarify whether the shape and appearance of a product (in this case, a horizontal central black stripe inside the relevant cheese) fall under the scope of “evocation” within the meaning of EU law. More specifically, the CJEU was requested to establish whether Article 13(1) of Regulation 510/2006 and Article 13(1) of Regulation 1151/2012 must be interpreted as prohibiting solely the use by a third party of the registered name, or as also prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance of the protected name which are characteristic thereof claimed in the product specifications, which is liable to mislead the consumer as to the true origin of the product.
Should the CJEU answer in the affirmative, which would be in line with the tendency of the Court, it will be interesting to explore the practical implications of such ruling, which could in principle lead to an overlap of specific IP rights covering trade dress the shape and the appearance of the product.