On May 2, 2019, the Court of Justice of the European Union (“CJEU”) delivered a decision on the protection of geographical indications, clarifying that using figurative signs evoking the geographical area to which a protected designation of origin (“PDO”) is linked may constitute an unlawful evocation of the latter. The ruling followed a request for a preliminary ruling that was made in the proceedings pending before the Supreme Court of Spain between the Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (the “Foundation”), the Industrial Quesera Cuquerella SL (“Industrial Quesera”) and Juan Ramón Cuquerella Montagud (“Mr Juan”).
The facts of the main proceedings
In the main proceedings, the Foundation that is responsible for the certification and protection of “Queso Manchego” PDO, brought an action against Industrial Quesera, a Spanish company producing dairy products, and against Mr Juan. The claim was based on an alleged infringement of the PDO “Queso Manchego” by certain cheese labels that were produced and marketed by Industrial Quesera, in so far as those labels contained words and images which constituted an unlawful evocation of that PDO, pursuant to Article 13(1)(b) of EU Regulation no. 510/2006.
The labels in question contained graphic representations of characters and landscapes, such as knights, horses, sheep and windmills, that recall the usual depictions of the famous novel “Don Quixote de La Mancha”, written by Miguel de Cervantes. In addition, one of the words used on some cheese labels is “Rocinante”, the name of the lean horse ridden by Don Quixote, while another cheese was identified with the archaic word “andarga”, which means a small leather shield that was frequently mentioned in the novel.
The Spanish Court of First Instance and the Albacete Provincial Court of Appeal dismissed the action. Both courts considered that, although the names and drawings used by Industrial Quesera on its labels evoked the Spanish region of La Mancha, the type of cheese “Queso Manchego” that is protected by the PDO did not. Consequently, no illegal evocation of any registered name was found.
The questions referred for a preliminary ruling and the reasoning of the CJEU
The Foundation brought an appeal before the Supreme Court of Spain, which stayed the proceedings and referred three questions to the Court of Justice for a preliminary ruling.
With the first question, the court of referral asked whether the evocation of a registered name can result from the use of figurative signs. The ECJ answered the question in the affirmative, noting that, pursuant to Article 13(1)(b) of Regulation no. 510/2006, registered names must be protected against “any misuse, imitation or evocation”, and stressing that the use of the term “any” must be interpreted in such a way as to cover cases in which evocation takes place through the use of a word element or a figurative sign.
With regard to the concept of “evocation”, in line with its earlier ruling in the Gorgonzola case (C‑87/97), the Court held that, in order to determine whether a name or a sign evokes a registered name, it is necessary to give priority to the consumer’s point of view. If the elements in question are capable of triggering in the consumer’s mind the product protected by the PDO, then there is an evocation within the meaning of the Regulation.
By its second question, the Supreme Court asked whether the use of such names and drawings evoking the region of La Mancha, with which the PDO is associated, may constitute an evocation of that PDO, even where those names and drawings are used by a producer who is established in that region, but whose products, similar and comparable to those protected, are not covered by the PDO.
The Court first found that Article 13(1)(b) of the Regulation does not provide for any exception in favor of a producer on the ground that it is established in a geographical area to which a PDO is linked and that, consequently, the producer cannot be excluded from the scope of the Regulation. The ECJ then pointed out that it would be up to the national judge to ascertain whether the names and designs in question are actually able to create a connection with the cheese “Queso Manchego”.
Finally, the court of referral asked for a clarification of the concept of the ‘average consumer’, who is reasonably well informed and reasonably observant and circumspect, and who must be taken into account by the national court when assessing the existence of an “evocation”. The ECJ clarified that this concept must refer to a European consumer, including those consumers in the Member State where the product which gives rise to the illegitimate evocation of a PDO is most produced and consumed, which is, in this case, Spain. In any case, it will be up to the national court to assess whether the names and designs on the labels of the cheeses involved, which are mainly produced and distributed in Spain, can evoke in the minds of Spaniards the image of a registered name, or not.