The use of images or graphics could become a violation of a protected designation of origin

The Court of Justice of the European Union (EUCJ) has recently expressed its assessment about the possibility of certain figurative elements (images, graphics) used in products not covered by a Protected Designation of Origin (PDO), however evoke in consumers region with which a PDO is associated.

The ruling of the EUCJ stems from the controversy between the ‘Fundación Denominación de Origen Protegida Queso Manchego’ and a manufacturer of cheese (not under the cover of the PDO) who is making use of images of the Quixote, Rocinante or traditional manchegos mills, to promote his cheese. According to ‘Fundación Denominación de Origen Protegida Queso Manchego’ the images included in the products are identifiable with word and figurative elements evoking La Mancha and constituting a violation of the said designation of origin, acts of unfair competition and deceit.

Even though the lawsuit lodged by the PDO has been dismissed whether in first and second instance, currently is pending of a new appeal before the Supreme Court in Spain. This Court has, prior to grant a decision, raised the preliminary ruling to the EUCJ seeking interpretation of the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs Regulation (EC) No 510/2006 — Article 13(1)(b)).

The EUCJ has solved the preliminary ruling stating that both, figurative and word elements, must be considered together when evaluating whether (i) the relevant product is not under the PDO and; (ii) the likelihood of a consumer to associate a certain product with a protected designation of origin. The EUCJ leaves in National Courts the assessment, on a case-by-case base, of the evoking character of the signs and elements. We, therefore, will have to wait to the decision of the Supreme Court, to see if the images used by the manufacturer constitute infringement of a PDO.