European Court of Justice Grants Protection to Registered Designation of Origin Parmigiano Reggiano
March 20, 2008
Producers of Parmigiano Reggiano, Parmesan cheese, and other registered protected designation of origin and consumer associations are affected by the implications of the European Court of JusticeOn 28 February 2008, the European Court of Justice (ECJ) ruled in European Commission v. Federal Republic of Germany, C-132/05 that protection granted to Parmigiano Reggiano extends to all Parmesan.
In the action brought by the Commission of the European Community (the Commission) against the Federal Republic of Germany, two questions were raised, namely whether the protection of the registered protected designation of origin (PDO) “Parmigiano Reggiano” also extends to the word “Parmesan”, and the scope of the obligations imposed on Member States to enforce the protection provided by the Council Regulation No. 2081/92 of 14 July 1992 (the Basic Regulation) in their territory.
The Commission claimed that the Federal Republic of Germany, refusing to prosecute in its territory the use of the word Parmesan in connection with cheese placed on the market and produced in violation of the mandatory specification for the PDO Parmigiano Reggiano, had failed to comply with its obligations to enforce the protection of said PDO in its territory. The German Government alleged that both the words Parmesan and Parmigiano were generic terms used to designate a category of hard cheeses which includes, among the others, Parmigiano Reggiano. Said allegation was not raised in connection to the PDO as a whole.
The Extension of the Protection Granted by a Registered PDO
The ECJ first addressed the question of whether the protection of the PDO Parmigiano Reggiano extends to Parmesan. In so ruling, the ECJ interpreted Article 13 (1) (b) of the Basic Regulation, which states that a PDO is 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” or “imitation”. Based on the claim raised by the Federal Republic of Germany, the ECJ reasoned that an important limitation to the scope of protection of a PDO is represented by generic names, meaning the name of an agricultural product or a foodstuff which, although it relates to the place or the region where the product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff. According to the ECJ in Consorzio per la tutela del formaggio Gorgonzola (Case C-87/97), the term evocation within the meaning of the Basic Regulation 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 goes to that of the product whose designation is protected. There is evocation even in the absence of a likelihood of confusion between the products at a glance. Moreover, as stated by the Basic Regulation under Article 13 (1) (b), the indication of the true origin of a product on its packaging does not exclude the evocation of a registered PDO. Finally, the ECJ ruled that there might be evocation even where no Community protection extends to the parts of a PDO which are echoed in the term or terms at issue.
Based on the foregoing, the ECJ first addressed the issue of whether the use of the word Parmesan is to be deemed as evocation of the registered PDO Parmigiano Reggiano within the meaning of the Basic Regulation. To this end, the ECJ reasoned that a triple test shall be carried out regarding both visual and phonetic similarity as well as conceptual proximity between the terms in comparison. The ECJ concluded that the proximity and the phonetic and visual similarities are such as to bring to the consumer’s mind the cheese protected by the PDO, Parmigiano Reggiano, when he or she is confronted by a hard cheese bearing the name Parmesan.
In analysing the Federal Republic of Germany’s allegations that the word Parmesan became a generic name, the ECJ had to consider whether all the factors had been kept in mind, namely the places of production of the product concerned both in the territory of the Member State where the PDO has been obtained and outside, the consumption of the product concerned, the perception of the product by the consumers both inside the territory of the Member State of origin of the PDO and outside, and finally the existence of national legislation specifically relating to that product and the way in which the name has been used in Community law. To this regard, the Federal Republic of Germany did not comply with the burden of proof that requires the party that claims that a term has become the generic name of a certain product to prove the circumstances laid down above. In order to comply with said burden of proof, the Federal Republic of Germany might have submitted a consumer survey regarding the consumption of the product concerned and the perception thereof. Missing said evidence, the ECJ rejected the Federal Republic of Germany’s defence and concluded that the use of the word Parmesan for cheeses which does not comply with the compulsory specification of the PDO Parmigiano Reggiano represents an infringement of the PDO pursuing to Article 13 (1) (b) of the Basic Regulation.
The Scope of the Obligations Imposed on Member States to Enforce a PDO
The second crucial issue of the proceeding was that of the scope of the obligations imposed on Member States to guarantee the enforcement of the protection granted by a PDO in their respective territory. In this respect, the European Commission pointed out that the administrative practice of the German authorities was in breach of the Community law in that the authorisation to market products which do not comply with the statements of the Basic Regulation, might have been ex officio denied.
The ECJ ruled that according to Article 10 of the Basic Regulation, Member States shall appoint inspection authorities. However, no obligation seems to be imposed under the same article on Member States to take ex officio administrative measures to guarantee the enforcement of a PDO in their territory. In this respect, the ECJ ruled that, even though the wording of Article 10 of the Basic Regulation is unclear, it is for the inspection authority of the Member State where the PDO originates to carry out any initiative in defence of the same. Since the European Commission failed to provide evidence that the Federal Republic of Germany was under a binding obligation to take administrative measures to guarantee the enforcement of a PDO, the claim of the European Commission has been dismissed.
Future Implications
The conclusion of the ECJ affirms the right of the Italian Consorzio del Formaggio Parmigiano Reggiano to exclusively produce a cheese bearing the word Parmigiano Reggiano or Parmesan within the territory of the Member States of the European Union.
With regards to measures to secure the enforcement of a registered PDO in Member States, the reasoning of the ECJ seems to be questionable. As a consequence of this ruling, it seems in fact that unless the wording of the Basic Regulation were to be amended in future by the Community legislator, inspection authorities of the Member State where the PDO originates shall be the only one to take measures to guarantee the enforcement of the same, where any other Member State shall only dispose of legal systems which offer the means to enforce said intellectual property rights. However since the decision of the ECJ mostly focused on the lack of evidence by the Commission that the Member State concerned has been requested to take action, it seems that complaints or requests for legal protection might be sent to the national inspection authorities by the interested parties. In other words, from the reasoning of the ECJ, it is not excluded in principle that a complaint of an association of producers whose products bear a PDO or association of consumers in a Member State other than that of the origin of a PDO, shall be sent to the local inspection authority for action. Should said authority unreasonably deny the requested action, according to the national legislation concerned, the requesting party might be in a position to appeal before the administrative judicial authority of the Member State concerned. Before said authority on a case-by-case basis a preliminary question might be referred to the ECJ with respect to the interpretation of Article 10 of the Basic Regulation.
