- Avv. Paola Corte
European Court of Justice's ruling on the use of registered PDO names in the trade names of comp
The European Court of Justice ruled on the on the possibility of using registered PDO names in the trade names of compound products containing the PDO product as an ingredient.
At the end of 2012, Aldi began to sell a frozen product distributed under the name “Champagner Sorbet” which contained, among its ingredients, 12% champagne. The CIVC, an association of Champagne producers, taking the view that the distribution of that product under that name constituted an infringement of the PDO ‘Champagne’, brought proceedings before a Geman Court in order to obtain an injunction prohibiting Aldi from using that name on the frozen goods market. The decision of that court, which granted the application, was reversed on appeal. The German Federal Court of Justice then referred the case to the European Court of Justice.
The European Court of Justice had to determine whether the use of a name registered as PDO or PGI could legitimately be used in the trade name of a foodstuff which contains the PDO/PGI as an ingredient. The Court of Justice ruled out that the use of a PDO in the name of a compound food is automatically to be considered illegitimate. The use of a PDO as part of a name under which a foodstuff is sold “cannot be regarded, in itself, as an unfair use and, therefore, as a use against which PDO’s are protected in all circumstances”. Illegal exploitation of the reputation of a PDO requires the use of this PDO to take undue advantage of the reputation of the PDO. Therefore, in order to determine whether the use of a PDO in the trade name undermines the protection attributed to the PDO, the Court of Justice explained that national courts should examine each case in light of its particular circumstances.
The criteria used for this assessment should ensure a consistent application of the the provisions the EU horizontal quality policy regarding the protection of registered geographical names and indications. The Court of Justice referred to recital 32 of EU Regulation 1151/2012, which in turn recalls the Commission’s 2010 “Guidelines on the labeling of foodstuffs using protected designations of origin (PDO) and a protected geographical indications (PGI) as ingredients”.
In this document, the Commission considers that a name registered as a PDO or PGI may be mentioned in or close to the trade name of a foodstuff incorporating products benefiting from a registered name, as well as in the labelling, presentation and advertising relating to that foodstuff, provided that three conditions are met: 1.)The foodstuff in question should not contain any other “comparable ingredient”, i.e. any other ingredient which may partially or totally replace the ingredient benefiting from a PDO or PGI; 2.) This ingredient should also be used in sufficient quantities to confer an essential characteristic on the foodstuff concerned (no minimum percentage can be uniformly applied); 3) the percentage of incorporation of an ingredient with a PDO or PGI should ideally be indicated.
A relevant test, according to the ECJ, is whether the ingredient protected by a PDO has been added in sufficient quantity to confer one of its essential characteristics on the foodstuff concerned. Moreover, the quantity of that ingredient in the overall composition of the foodstuff is a significant but not, in itself, a sufficient factor. Whether that is the case depends on the products concerned, and entails a qualitative assessment. In that regard, it is not a question of identifying the essential characteristics of the ingredient protected by a PDO in the foodstuff, but of establishing that that foodstuff has an essential characteristic connected with that PDO ingredient. That characteristic will often be the aroma or taste imparted by that ingredient.
Where the name of the foodstuff indicates, that it contains an ingredient protected by a PDO, which is intended to convey the taste, the taste imparted by that PDO must constitute the essential characteristic of that foodstuff. If the taste of the foodstuff is more attributable to other ingredients it contains, the use of such a name will take unfair advantage of the reputation of the PDO concerned. It would therefore constitute an undue exploitation of the reputation of a PDO, within the meaning of the EU provisions, if that foodstuff did not have, as one of its essential characteristics, a taste attributable primarily to the presence of the PDO.
The Court ruled that, as for the Champagner Sorbet, by incorporating the name of the ingredient protected by a PDO in the name of the foodstuff in question, direct use was made of the PDO to openly claim a gustatory quality connected with it, which does not amount to misuse, imitation or evocation.
Italian law, disregarding the criteria set forth by the EU Commission, provides that referring to one or more PDO or PGI in the trade name, labeling, presentation or advertising of compounded or processed products containing the PDO as an ingredient is always punished with a regulatory sanction, unless there is an explicit authorization of the Protection Consortium or, failing that, of the Ministry of Agriculture. It is now even more unclear how this provision could be considered consistent with EU law.
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