Consumer

PDO, EU Court of Justice clarifies ban on evocations

May 3, 2019

Don Quixote wins the first battle against the windmills. The name of his horse and the image of the countryside with mills and sheep constitute evocations of the Spanish region of La Mancha and cannot be used on a pecorino other than ‘Queso Manchego PDO’. Thus clarifies, once and for all, the EU Court of Justice. Viva Don Quixote!

PDO and PGI, bans on counterfeiting and evocation in EU

The European protection regime Of geographical indications (Geographical Indications, GIs) expressly prohibits both imitation and usurpation-that is, the counterfeiting explicit – of names protected as PDO and PGI, both their evocation. (1) Which qualifies as implied counterfeiting, which also occurs in cases of suggestion of bogus provenance (e.g.

Italian sounding

).

‘
Registered names are protected
Versus:

(a) any direct or indirect commercial use of a registered name for products that are not the subject of registration, if those products are comparable to the products registered under that name or the use of that name enables the exploitation of the reputation of the protected name, including when such products are used as an ingredient;

(b) any usurpation, imitation, or evocation, even if the true origin of the goods or services is indicated or if the protected name is a translation or is accompanied by expressions such as “style,” “type,” “method,” “in the manner,” “imitation,” or the like, even where such goods are used as an ingredient;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product used on the wrapping or packaging, in advertising material or on documents relating to the product in question, as well as the use, for packaging, of containers that are likely to mislead as to its origin;

(d) any other practice likely to mislead the consumer as to the true origin of the product‘ (reg. EU 1151/12, Art. 13, Protection).

The evocation of PDOs and PGIs is prohibited whenever in labeling or advertising of a ‘comparable product‘ reference to the territory associated with the protected traditional production is suggested. Regulation (EU) 510/2006, moreover, does not offer an explicit definition of ‘evocation‘. Which member states have a duty to ‘prevent or stop,’ like any other unlawful use of protected designations of origin and protected geographical indications. (2)

Evocation of PDOs, the Don Quixote case.

The consortium for the protection of ‘Queso Manchego PDO’ has given excellent proof of its task of market surveillance, as delegated by the competent national authority. (3) Suing the dairy industry ‘Industrial Quesera Cuquerella‘ for using images evocative of the geographical area delimited by the PDO sheep cheese specification on the label of another sheep ‘queso‘ produced in the same area but lacking recognition.

The allusion to the territory of ‘LaMancha‘ was made through reference to its most characteristic symbols. Through graphic signs-a drawing of a horseman reminiscent of classical depictions of Don Quixote de la Mancha, against the backdrop of a landscape with sheep and windmills-and a name, ‘Rocinante. Which happens to coincide with that of the horse of the character devised by Miguel de Cervantes (1547-1616).

The producer of ‘
Queso Rocinante
‘ prevailed in the first and second instance judgments, but the ‘Queso Manchego PDO’ protection consortium insisted on asserting its case before the ‘Tribunal Supremo. Which in turn relied on the EU Court of Justice for the official interpretation of the European regulation. In order to clarify whether figurative signs may be suitable per se to evoke a PDO, or whether they may still be used by a producer established in that region, on products that do not belong to the PDO.

Don Quixote, Court of Justice ruling.

On 2.5.19, the EU Court of Justice clarified that the European PDO and PGI regime protects geographical indications against ‘any evocation’. This concept reflects the legislature’s desire to protect registered names against any form of evocation, literal or even merely figurative. (4)

It must therefore be ascertained on a case-by-case basis whether words and signs are capable of provoking in the average consumer’s imagination the suggestion that the product comes from the area identified in the PDO specification. In fact, the European quality scheme for traditional agricultural products serves to guarantee consumers simple, clear and reliable information on the origin of the product.

As for the ‘average consumer,’ the Luxembourg Court stresses the need to ensure uniform protection at the EU level. We must therefore refer to the European consumer and at the same time to the consumer in the member state where the product is made and consumed most. ‘Case-by-case’ assessment will not be easy in countries like ours, where several PDOs-even on products belonging to the same category-fall under identical or contiguous bell towers. What raw ham will boast a reference to Giuseppe Verdi, to cite just one example?

Dario Dongo

Notes

(1) See reg. EC 510/06, ‘on the protection of geographical indications and designations of origin for agricultural products and foodstuffs‘, repealed by subsequent reg. EU 1151/12

(2) Cf. d.lgs. 297/04, Article 2. For more on the current penalty regime in Italy, see the article https://www.foodagriculturerequirements.com/archivio-notizie/domande-e-risposte/olio-extravergine-d-oliva-100-siciliano-risponde-l-avvocato-dario-dongo. A recent example of the effectiveness of controls in the country, by the RACs, Carabinieri Command for Agri-food Protection, on https://www.greatitalianfoodtrade.it/etichette/carni-e-salumi-falsi-maxi-sequestro-dei-rac-a-bolzano. A bad example about the European Commission’s starvation at the lack of control by other member states, on https://www.greatitalianfoodtrade.it/idee/controlli-su-dop-igp-e-stg-la-commissione-europea-nicchia-sulla-inaccettabile-carenza-dei-controlli