C-87/97

OPINION OF MR JACOBS — CASE C-87/97

OPINION OF ADVOCATE GENERAL JACOBS delivered o n 17 D e c e m b e r 1998

1. Is it compatible with Community law for similar recognised designation, supervising the a national court to prohibit the marketing use of the consortium's trade marks and under the designation 'Cambozola' of a cheese ensuring application of the rules on protecting imported from another Member State where designations of origin of types of cheese. The it is lawfully marketed under that name on members of the consortium add to the pro- the ground that its use infringes the designa- tected designation of origin 'Gorgonzola' spe- tion of origin 'Gorgonzola', registered under cific trading names to identify their dairies, Council Regulation (EEC) N o 2081/92 of 14 generally including the component '-zola'. July 1992 on the protection of geographical indications and designations of origin for agri- cultural products and foodstuffs ' and pro- tected under certain international agreements? That, essentially, is the question in effect raised by this reference from the Handelsgericht, Wien (Commercial Court, Vienna).

3. The first defendant is a cheese-producer established near Kempten, Germany, which produces a soft cheese, also with blue mould, The facts and the main proceedings called Cambozola. The first defendant has marketed Cambozola in Germany since autumn 1977 and in Austria since March 1983; Cambozola is also sold in almost all other Member States. The first defendant is the owner of the Austrian trade mark 'Cambo- zola', with protection from 7 April 1983, reg- istered for milk and milk products, especially 2. The applicant in the main proceedings is a cheese. consortium of producers of Gorgonzola cheese. Gorgonzola is a soft cheese marbled •with blue mould which derives its name from the former village (now a suburb of Milan) in the province of Milan, Italy. The consortium's objects include promoting the production of and trade in Gorgonzola cheese, protecting the use of the designation 'Gorgonzola' or a

5. In May 1994 the applicant applied to the Handelsgericht, Wien, for an order that the defendants cease marketing a blue cheese 8. The Treaty invoked was the international under the designation 'Cambozola' and con- Convention for the use of appellations sent to the cancellation of the 'Cambozola' d'origine and denominations of cheeses, signed trade mark. The applicant also sought an at Stresa on 1 June 1951. That Convention interim order prohibiting the defendants from covered use of the name 'Gorgonzola' as from marketing a blue cheese under the designa- 1 June 1954. 2 Article 1 of the Convention tion 'Cambozola' for the duration of the pro- prohibits 'all specifications which constitute ceedings. false information as to the origin, variety, nature or specific qualities of the cheeses ...'. Article 3 protects the specified names 'whether they are used alone or accompanied by a qualifying or even corrective term such as "type", "kind", "imitation", or other term'.

6. The applicant based its claim on provi- sions of national and international law.

9. The Handelsgericht granted an interim order on 24 June 1994 on the basis of the Stresa Convention. That decision was upheld 7. The national law invoked was the Östcr- on appeal by the Obcrlandesgcricht, Wien reiches Gesetz gegen den unlauteren Wettbe- (Higher Regional Court, Vienna) on 22 Sep- werb (Austrian law against unfair competi- tember 1994. It appears that those two courts tion). Paragraph 1 of that law considers any ruled that the Stresa Convention not only unfair trading practice to be anti-competitive. Paragraph 2 provides that deception, in par- ticular as to quality, origin and method of 2 — Sec Protocol II to the Convention.

12. The defendants argued before the Han- 11. The Austro-Italian Agreement obliges the delsgericht that the interim order and the final Contracting Parties to take all necessary mea- order sought by the applicant infringed Com- sures effectively to protect geographical des- munity law. They submitted that the cheese ignations of origin and names of certain prod- was lawfully put on the market under the ucts against unfair competition. 5 Any name 'Cambozola' in its State of origin

3 — Consorzio per la Tutela del Formaggio Gorgonzola v Land- genossenschaft Ennstal and Agrarverwertungsverband, judg- 6 — Article 1(2). ment of 18 May 1993. 7 — Article 2(2). 4 — Bundesgesetzblatt, 19 April 1995, p. 3729, paragraph 269. 8 — Annexes I and II. 5 — Article 1(1). 9 — Annexes I and II.

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CONSORZIO PER LA TUTELA DEL FORMAGGIO GORGONZOLA v KÄSEREI CHAMPIGNON HOFMEISTER AND DRACIIARZ (Germany) and imported into Austria and is as a rule not displayed and sold to con- that the prohibition restricted trade contrary sumers in the form of whole cheeses, but in to Article 30 and was not justified by Arti- pieces, sometimes without the original pack- cle 36 of the EC Treaty. aging?'

13. Seeking guidance as to whether the orders were contrary to Article 30 or justified by Article 36, the Handelsgericht referred the following questions to the Court of Justice 14. Written observations have been submitted for a preliminary ruling: by the applicant, the defendants, the Aus- trian, French, Greek and Italian Governments and the Commission. The applicant, the defen- dants, the French, Greek and Italian Govern- ments and the Commission were represented at the hearing.

16. In my view, however, given that the ques- protection in every Member State. The Regu- tions submitted to the Court refer to 'the cur- lation is based on Article 43 of the Treaty rent state of Community law' and that the (agriculture); it is clear however from the pre- order for reference was made on 18 July 1996, amble that it also has objectives of consumer it is appropriate for the Court to answer the protection and fair competition. 13 questions on the basis of the Regulation if that instrument will resolve the dispute before the national court. The Court has on occa- sion shown itself willing when answering questions to interpret provisions not specifi- cally mentioned by the national court, stating that it is its duty to interpret all provisions of Community law which national courts need in order to decide the actions pending before 18. Article 13(1) provides: them, even if those provisions are not expressly indicated in the questions referred. " The parties, the Governments which have sub- mitted observations and the Commission have all moreover made their submissions on the basis that the Regulation is applicable.

'Registered names shall be protected against:

(d) any other practice liable to mislead the public as to the true origin of the prod- uct.' Substance

Article 13 of the Regulation

19. Notwithstanding that protection, Arti- cle 14(2) allows the use of a trade mark cor- responding to one of the situations referred 21. The first issue to be determined is whether to in Article 13 to continue if the trade mark 'Gorgonzola' is protected against the use was registered in good faith before the date of 'Cambozola' within the meaning of on which the application for registration of a designation of origin or geographical indica- tion was lodged providing that there are no U — First Council Directive 89/I04/EUC of 21 December 1988 grounds for the invalidity or revocation of to approximate the laws of tlic Member States relating to trade marks, OJ 1989 L 40, p. 1. the trade mark as provided by Article 3(l)(c) 15 — Article 3(l)(c) is irrelevant for the purposes of this case.

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Article 13(1) of the Regulation. The argu- 24. They refer to a similar action brought by ments have focused in particular on the applicant in the present proceedings against Article 13(l)(b), which it will be recalled pro- the first defendant before the German courts, tects registered names against 'any misuse, stating that the action has been dismissed by imitation or evocation'. the Landgericht Frankfurt am Main 17 and on appeal by the Oberlandesgericht Frankfurt am Main l s and that an appeal by the appli- cant to the Bundesgerichtshof has been dis- missed. 19

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CONSORZIO PER LA TUTELA DEL FORMAGGIO GORGONZOLA v KÄSEREI CHAMPIGNON HOFMEISTER AND BRACHARZ protection of industrial or commercial prop- a protected name is not protected as such. erty within the meaning of Article 36 of the That Annex lists protected names of, inter Treaty. In both cases the relevant criterion is, alia, cheeses, such as for example the designa- as the Court has frequently held, the average tions of origin Brie dc Mcaux, Camembert de observant and circumspect consumer. The Normandie, Pecorino Siciliano and Mozza- defendants accordingly submit that the Court rella di Bufala Campana. Footnotes to the in tliis case should follow the same approach Annex indicate however that protection of as in SABEL. 21 the names Brie, Camembert, Pecorino and Mozzarella is not sought. The defendants refer to the recent ruling of the Court in Chidak and Fol, 24 which concerned crimimal proceedings brought against Mr Chiciak and Mr Fol for having used the name 'Epoisscs'. The prosecution had argued that, since 'Epois- 26. The Court in SABEL ruled that the mere scs de Bourgogne' was protected by the Regu- association which the public might make lation with no footnote qualification in respect between two trade marks as a result of their of 'Epoisscs', the 'Epoisses' part of the des- analogous semantic content was not in itself ignation 'Epoisscs de Bourgogne' was pro- sufficient ground for concluding that there tected as such. was a likelihood of confusion within the meaning of Article 4(l)(b) of the Directive. 22 The defendants consider that the association of ideas at issue in SABEL (between two pic- torial representations of bounding feline beasts of prey) was much stronger than any associa- tion with the idea of 'Gorgonzola' triggered by the use in 'Cambozola' of the same suffix, which is widely used in Italy. The defendants accordingly conclude that the use of that suffix does not alone constitute evocation within the meaning of the Regulation.

the Member States had decided not to seek the applicant was an evocation. That adver- protection, whether because the part had tisement stated that, coming 'from the best become generic, because the part in question family', the cheese combined 'the delicate was not protected at national level at the time creamy consistency of noble Camembert with when the application for registration was made the piquant taste of spirited Gorgonzola'; the pursuant to the 1992 regulation or for other defendants state, however, that that was a reasons. 25 solitary advertisement used in 1985 and not subsequently. They point out that the Court has not been asked to consider the effect of that advertisement, but merely the legality of the name 'Cambozola' (although it may be added that the questions referred also men- tion the packaging and sales practice). 29. The defendants submit that it follows from Chiciak and Fol first that, since Brie cannot be regarded as an evocation of Brie de Meaux, or Camembert an evocation of Cam- embert de Normandie, 'zola' cannot be regarded as an evocation of 'Gorgonzola', and second that 'zola', as a component of 'Gor- gonzola', cannot be protected under the Regu- lation.

CONSORZIO PER LA TUTELA DEL FORMAGGIO GORGONZOLA v KÄSEREI CHAMPIGNON HOFMEISTER AND BRACHARZ mislead the consumer in particular as to the apparent to connoisseurs) it seems to me that true origin of the product contrary to 'Cambozola' is unquestionably, as a matter of Article 13(l)(d). The Commission considers the ordinary use of language, an evocation of that use of the name 'Cambozola' constitutes 'Gorgonzola' for the purposes of at least evocation, and possibly imitation Article 13(l)(b). It is interesting to note — as (although the Commission does not consider the Commission points out — that the iden- this further), within the meaning of Article tity of the final two syllables alone is not suf- 13(l)(b). ficient: it could not to my mind seriously be argued that the culinary oil 'Mazóla' was an evocation of 'Gorgonzola', given both the lack of any further phonetic similarity and the different types of product at issue.

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36. I cannot in any event accept the defen- wholly different context, namely the interpre- dants' argument that the alleged fact that the tation of the notion of evocation for the pur- suffix 'zola' is a common suffix in Italian place poses of the Regulation. names could in itself prevent its being an evo- cation in the context in which it is used: the fact that it might be common in some parts of Italy cannot prevent it from being an evo- cation elsewhere, where names ending in-zola are rare.

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CONSORZIO PER LA TUTELA DEL FORMAGGIO GORGONZOLA v KÄSEREI CHAMPIGNON HOFMEISTER AND BRACHARZ 40. Both the applicant and the Austrian Gov- 42. The Regulation was published on 24 July ernment submit that the Court, if it finds that 1992. Article 13(l)(b) of the Regulation is appli- cable, should take account of Article 13(2).

43. It appears from the wording of the provi- sion that what is meant by 'expressions 41. Article 13(2) provides: referred to in paragraph 1(b)' is the expres- sions 'such as "style", "type", "method", "as produced in", "imitation" or similar' referred to in paragraph 1(b), 27

'However, Member States may maintain national measures authorising the use of the expressions referred to in paragraph 1(b) for a period of not more than five years after the 44. The applicant considers that Article 13(2) date of publication of this Regulation, pro- permits Member States to authorise, for a vided that: transitional period of five years and subject to certain conditions, the use of names within the scope of Article 13(l)(b). However, it submits that it is clear from the spirit and objective of the provision, which as a deroga- tion should be strictly construed, that it applies — the products have been marketed legally only to designations of origin which were not using such expressions for at least five protected before registration pursuant to the years before the date of publication of this Regulation. Regulation,

— the labelling clearly indicates the true origin of the product. 45. The Austrian Government considers that Article 13(2) permits the use of protected names with an indication of the origin of the product for a period expiring after the case had been referred to this Court, subject to two conditions both of which arc met in this case. However, this exception may not lead to the marketing of products freely on the territory of a Member State where such expressions are 27 — Sec the text of Article 13(l)(l>), set out in paragraph 18 prohibited.' ahovc.

46. In my view, those arguments are miscon- Article 14(2) of the Regulation: 'good faith' ceived. Article 13(2) permits for a transitional period (and only from 1992, not from regis- tration) the use of certain expressions such as 'style', 'method', 'as produced by' and 'imita- tion' (for example, 'in the style of Gor- gonzola'), -which would otherwise be prohib- ited by Article 13(l)(b). That is a separate issue from the issue before the Court in this case, namely what constitutes evocation of the name, and is not to my mind relevant to the present case. 48. At the time of the registration of 'Cam- bozola' in Austria it appears that Austria was bound by the Stresa Convention for the use of appellations d'origine and denominations of cheeses. That Convention covered use of the name 'Gorgonzola' as from 1 June 1954. 29 It appears that the Oberster Gerichtshof (Supreme Court) has ruled that Article 3 of the Stresa Convention prohibits an evocative name such as, in that case, 'Österzola'. 30 The 47. I accordingly conclude that 'Gorgonzola' applicant seeks to rely on that judgment in should be protected by virtue of support of its submission that the registration Article 13(l)(b) of the Regulation against evo- of 'Cambozola' was not made in good faith, cation by Cambozola. Article 14(2) of the stating that the registration was unlawful and Regulation, 28 however, allows the use of a hence can never have been in good faith. trade mark corresponding to one of the situ- ations referred to in Article 13 to continue if the trade mark was registered in good faith before the date on which the application for registration of a designation of origin or geo- graphical indication was lodged providing that there are no grounds for the invalidity or revocation of the trade mark as provided by Article 3(l)(c) and (g) and Article 12(2)(b) of the Trade Marks Directive. The mark 'Cam- bozola' was registered in April 1983, thus necessarily predating the application to reg- 49. The Italian Government also takes the ister 'Gorgonzola' under the Regulation. Arti- view that the registration of 'Cambozola' was cle 14(2) may therefore be applicable, and I not made in good faith: 'Gorgonzola' has, will now turn to the two issues which may since before the registration of 'Cambozola', arise under that provision, namely the ques- been protected by international conventions tion of good faith and the grounds for inval- to which Austria is or has been a party. idity or revocation of the mark.

Article 14(2) of the Regulation — the Trade Marks Directive 51. Article 14(2) is designed to allow a prior trade mark to co-exist with a subsequently registered conflicting designation of origin provided that the trade mark was registered in good faith. It seeks to balance the con- flicting interests of the trade-mark owner and those entitled to use the designation of origin. An interpretation of the notion of good faith which is unduly onerous would risk preju- 53. Even if 'Cambozola' was registered in dicing an established mark and the legitimate good faith, however, Article 14(2) will not expectations of its owner, who may since reg- protect it if there arc any grounds for inval- istration of the mark have devoted much idity or revocation of the trade mark as pro- effort and expense to marketing his products; vided for by Article 3(l)(c) and (g) and an interpretation which requires too little of Article 12(2)(b) of the Trade Marks Directive. the trade-mark owner would on the other Thus 'Cambozola' will not be protected under hand operate to the detriment of users of a Article 14(2) if it is 'of such a nature as to protected designation of origin, who would deceive the public, for instance as to the see the protection to which they were ex nature, quality or geographical origin of the hypothesi entitled undermined. To my mind, goods' (Article 3(l)(g)) or if 'in consequence the test of good faith proposed by the Com- of the use made of it by the proprietor or mission is the correct test, namely whether with his consent ... it is liable to mislead the the owner of the mark took all reasonable public, particularly as to the nature, quality steps at the time of registration to satisfy or geographical origin' of the goods (Article himself that use of the mark was compatible 12(2)(b)). Article 3(l)(c) is irrelevant for the with the national law (including any purposes of this case.

56. Caution should moreover be used before 31 — Sec most recently Case E C R 1-4657, C-210/96 Gut Spring- enheide, judgment of 16 July 1998, paragraphs 30 and 31. finding that Article 12(2)(b) applies. That pro- See also Case C-362/88 GB-INNO-BM [1990] ECR 1-667; vision is applicable only where the mark is Case C-238/89 Pall [1990] ECR 1-4827; Case C-126/91 Yves Rocher [1993] ECR 1-2361; Case C-315/92 Verband Sozialer liable to mislead in consequence of the use Wettbewerb v Clinique Laboratories and Estéé Laitder [1994] ECR 1-317; Case C-456/93 Langguth [1995] E C R 1-1737; made of it by or with the consent of the owner and Case C-470/93 Verein gegen Unwesen in Handel und of the mark: mere use of the mark accord- Gewerbe Köln v Mars [1995] E C R 1-1923. See also the Opinion of Advocate General Fcnnclly of 29 September ingly does not in itself suffice. Nothing in the 1998 in Case C-303/97 Verbraucherschutzverein v Sekt- kellerei G. C, Kessler, E C R 1-513, 1-515, in particular at documents before the Court suggests that the paragraph 29 et seq. mark 'Cambozola' is being used improperly 32 — See paragraphs 50 and 51 of my Opinion in SÄBEL, cited in note 21. See also my Opinion delivered on 29 October by or with the consent of the owner, with the 1998 in Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen possible exception — which pre-dated the Handel, judgment of 22 June 1999, paragraph 20, and the Opinion of Advocate General Fennelly in Verbrauchers- protection and is not covered by the terms of chutzverein, cited in note 31, paragraph 30.

(i) it was registered in good faith, which will be the case if the owner of the mark took all reasonable steps at the time of its registration to satisfy him- self that use of the mark was compatible with the national law (including any applicable international provisions); and

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(ii) there are no grounds for the invalidity or revocation of the mark as pro- vided by Article 3(l)(c) and (g) and Article 12(2)(b) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. There will be such grounds in par- ticular where the mark is sufficiently specific to deceive a consumer as to, for example, the real nature, quality or geographical origin of the goods or is liable to mislead the public, particularly as to the nature, quality or geo- graphical origin of the goods, not merely by the similarity of the mark but in consequence of the use made of it by or with the consent of the owner. In assessing whether consumers are deceived or the public misled, the national court should use the criterion of the presumed expectations of an average consumer who is reasonably well informed and reasonably obser- vant and circumspect.

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