Foods that are similar to the (form, or the look and feel) of an original food product protected as a Protected Designation of Origin (PDO) or a Protected Geographical Indication (PGI) under the respective EU Regulations (EU Regulation No. 510/2006 was eventually replaced by EU Regulation No. 1151/2012) but sold under a different name can still be considered infringing. "All relevant circumstances, including the factual context" must be taken into account when assessing the scope of “evocation”, the legal term used in the law, the European Court of Justice (ECJ) recently ruled.

The case in question concerned the French cheese “Morbier”, a PDO for cheese with a horizontal central black stripe of (vegetable) charcoal in the middle (Case C-490/19). “Morbier” cheese enjoys PDO status since a Decree was adopted on 22 December 2000 which defined a geographical reference area and the necessary conditions for entitlement to that designation of origin. Said decree provided for a transitional period for undertakings situated outside the defined geographical area which had produced and marketed cheeses under the name “Morbier” in order to enable them to continue to use that name without the PDO indication for a five-year period. The defendant, who had ceased using the PDO “Morbier” after the transitional period, continued marketing the (same) cheese under a new name The plaintiff claimed that the visual appearance was (too) similar to that of the PDO “Morbier”, and specifically that the defendant cease use of the horizontal black.

The French court asked the CJEU to clarify whether the shape and appearance of a product 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.

The CJEU observed that the protection provided for by Regulations No 510/2006 and No 1151/2012 concerns the registered name and not the product covered by that name. Nevertheless, PDOs are protected as they designate a product that has certain qualities or characteristics. Thus, the PDO and the product covered by it are closely linked. Therefore, the possibility remains that the reproduction of the shape or appearance of a product covered by a registered name may fall within the scope of protection even without that name appearing either on the product in question or on its packaging, provided such reproduction is liable to mislead the consumer as to the true origin of the product in question.

The French court will now have to assess whether the horizontal black line of the “Morbier” cheese constitutes a baseline characteristic which is particularly distinctive so that its reproduction may lead the consumer to believe that the product containing that reproduction is a product covered by the PDO. IN any event, the practical implications of the ECJ’s ruling appear quite wide reaching, and lead to an overlap with rights that protect the trade dress, shape and appearance of a product.