C-66/00

2. To reply to the national court's ques- tions the Court will have to define the circumstances in which the transitional system of exemptions provided for by Article 13(2) of Council Regulation (EEC) 4. Although based on Article 37 EC, the No 2081/92 3 applies. purposes of the Regulation also include consumer protection and ensuring fair competition. 6 1 — Original language: French. 2 — Hereinafter 'PDO'. 3 — Council Regulation (EEC) No 2081/92 of 14 July 1992 on 4 — See, in particular, the third, fifth and sixth recitals of the the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 1992 preamble. L 208, p. 1), as amended by Council Regulation (EC) 5 — See Article 13(1) of the Regulation. No 535/97 of 17 March 1997 (OJ 1997 L 83, p. 3, here- 6 — See, in particular, the sixth and seventh recitals of the inafter 'the Regulation'). preamble to the Regulation.

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5. According to Article 2(1) of the Regu- factors, and the production, processing lation, 'Community protection of desig- and preparation of which take place in nations of origin ... of agricultural products the defined geographical area'. and foodstuffs shall be obtained in accord- ance with this Regulation'.

7. Under the first subparagraph of 6. Article 2(2) of the Regulation provides: Article 3(1) of the Regulation, 'names that have become generic' may not be regis- tered.

c

11. Article 17 of the Regulation provides 12. Registration confers a Community sys- as follows: tem of protection on PDOs. Article 13(1) and (3) of the Regulation provides as follows:

'1. Within six months of the entry into force of the Regulation, Member States shall inform the Commission which of their '1. Registered names shall be protected legally protected names or, in those against: Member States where there is no protection system, which of their names established by usage they wish to register pursuant to this Regulation.

(a) any direct or indirect commercial use of a name registered in respect of products not covered by the regis- tration in so far as those products are comparable to the products registered 2. In accordance with the procedure laid under that name or in so far as using down in Article 15, 8the Commission shall the name exploits the reputation of the register the names referred to in paragraph protected name; 1 which comply with Articles 2 and 4. Article 7 shall not apply. 9However, gen- eric names shall not be added.

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is 3. Member States may maintain national translated or accompanied by an protection of the names communicated in expression such as "style", "type", accordance with paragraph 1 until such "method", "as produced in", "imi- time as a decision on registration has been tation" or similar; taken.'

8 — This Article provides that the Commission is to be assisted by a committee composed of the representatives of the Member States, who participate very actively in the decision-making procedure. 9 — Article 7 of the Regulation provides that a Member State (c) any other false or misleading indication may object to a proposed registration. It lays down the as to the provenance, origin, nature or conditions for exercising that right and the procedural rules. It is provided, in particular, that a Member State may object essential qualities of the product, on to the registration of a generic name if it specifies the the inner or outer packaging, advertis- features which demonstrate that the name whose regis- tration is applied for is generic in nature. ing material or documents relating to

3. Protected names may not become gen- eric'. However, this derogation may not lead to the marketing of products freely within the territory of a Member State where such names were prohibited.' 13. Article 13(2) of the Regulation adds, however, that:

14. The Italian Republic applied for regis- tration of the designation 'Parmigiano '2. By way of derogation from paragraph Reggiano' under Article 17 of the Regu- 1(a) and (b), Member States may maintain lation. The Commission added that desig-

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nation to the list of PDOs in the Annex to labelled 'parmesan', which does not con- Regulation (EC) No 1107/96. 10 form to that specification. However the latter cheese is intended exclusively for sale abroad, particularly in France. It was also explained that Castelli also has an estab- lishment in France which merely imports the cheese made in Italy.

I I— Factual and procedural background

16. At the hearing Mr Bigi's counsel explained that Castelli has several produc- tion plants, all in Italy. Some of these plants produce a cheese which conforms to the 18. Mr Bigi is charged with having pro- specification for the 'Parmigiano Reggiano' duced and marketed in packages of 40 PDO, and which is intended to be marketed grammes each, for sale on the European in Italy, whilst others produce the cheese market and in particular in France, dried grated cheese prepared using a mixture of diverse types of cheese, pasteurised and in 10 — Commission Regulation (EC) No 1107/96 of 12 June 1996 on the registration of geographical indications and powder form, from various sources, using designations of origin under the procedure laid down in on the label the description 'parmesan', Article 17 of Council Regulation (EEC) No 2081/92 (OJ 1996 L 148, p. 1). such conduct amounting to fraudulent 11 — See, inter alio, the observations filed by Mr Bigi and the trading, by selling industrial products with Consorzio Formaggio Parmigiano Reggiano ('the Consor- misleading indications. He is also accused zio'). 12 — Hereinafter 'Castelli'. of having contravened the prohibition of

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using 'designations of origin and recognised of Regulation (EC) No 535/97) be typical designations, altering or partially interpreted as meaning that no official modifying them by adding, even if indi- measure of a legislative or adminis- rectly, qualifying terms, such as type, pur- trative nature need be adopted by the pose, taste or the like'. 13 Such conduct is Member State concerned in order to contrary to Articles 515 and 517 of the allow the use on its territory of desig- Italian Penal Code, and Articles 9 and 10 nations which may be confused with of Law No 125 of 10 April 1954. 14 those registered under Article 17 of Regulation No 2081/92?

20. Unsure of the interpretation to be given to the provisions of that article, and to enable it to determine the proceedings before it, the national court therefore asks 3. Does the lack of any opposition by the the Court to give a preliminary ruling on Member State in whose territory the the following seven questions: designation which is open to confusion with one registered under Article 17 of Regulation No 2081/92 is used render lawful the use of that designation by an undertaking whose registered office is in the territory of the Member State in which the designation was registered, if ' 1 . Must Article 13(2) of Regulation that undertaking uses the designation No 2081/92 (as amended by Article 1 which is open to confusion only for products intended to be sold outside 13 — See the order for reference, p. 1. the country of registration and only 14 — Legge italiana sulla denominazioni di origine e tipiche dei within the territory of the Member formaggi (Italian law on the protection of designations of origin and types of cheese) (GURI No 99 of 30 April 1954, State which is not opposed to use of the 'the 1954 Italian law'). said designation?

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4. Does the period of five years referred to with the one registered until the expiry in Article 13(2) of Regulation of the fifth year following the date of No 2081/92 for use of a name in registration of the protected desig- relation to a product whose desig- nation (12 June 1996), in other words nation was registered on 12 June 1996 until 12 June 2001? (see Regulation No 1107/96, cited above) expire on 12 June 2001?

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sequently, it asks that the Court declare the cal, or where the Court does not have request of the national court inadmissible before it the factual or legal material by reason of its lack of relevance and its necessary to give a useful answer to the general and hypothetical nature. 15 questions submitted to it ...'. 17

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provide the referring court with an answer The German Government considers that, which will be of use to it and enable it to because the name 'parmesan' has not been determine the case before it'. 18 registered, it does not come within the scope of the protection that Article 13(1) of the Regulation confers on the PDO 'Par- migiano Reggiano'. It further considers that, under the provisions of Article 3(1) of the Regulation, the name 'parmesan' can 'With this in mind, the Court of Justice may no longer be registered because it has have to reformulate the questions referred become generic. Since the questions sub- to it or to examine whether a question mitted exclusively concern the interpre- relating [in particular] to the validity of a tation of the provisions of the Regulation provision of Community law is based on a as to the protection attaching to PDOs, it correct reading of the provision in ques- therefore considers that they are based on a tion'. 19 misinterpretation of Community law and that they are not relevant to the outcome of the dispute. Consequently, the German Government asks the Court to confirm its reading of the Regulation, and to declare the questions inadmissible. 27. If the objection raised by the German Government were no more than a criticism of the national court for not having cor- rectly applied Community law in not treat- ing the name 'parmesan' as a 'generic name', the plea of inadmissibility would not be founded since the application of Community law to the facts of the case falls within the exclusive jurisdiction of the 29. It is indisputable that the questions national court. 20 submitted by the national court are neither general nor hypothetical. It follows that the German Government's plea of inadmis- sibility is unfounded.

B — Terms of the preliminary question 33. If the name 'parmesan' were held to be generic, it could not be protected under Article 13(1) of the Regulation, and could therefore be used throughout the Commu- nity. 21 The proceedings brought against 31. The first question of interpretation that Mr Bigi would therefore have to be aban- falls to be answered is whether the Regu- doned. lation should be interpreted as meaning that, in the circumstances of the present case, the contested name 'parmesan' may come within the scope of Article 13(1) of the Regulation. If the answer is in the affirmative, it would follow under the terms of Article 13(3) of the Regulation, that it can no longer become generic. The 34. If the name 'parmesan' were held not to questions referred for a preliminary ruling be generic, the Italian Republic would be would therefore have to be addressed. In entitled to apply for registration under the such a case the conduct of Mr Bigi, which is Regulation. 22 However, even if that unlawful under Article 13(1) of the Regu- Member State were to obtain registration lation, might be permitted in the light of the of that name as a PDO, the offences with derogation provided for by Article 13(2) of which Mr Bigi is charged could not be any the Regulation. more extensive: under the principle that criminal laws cannot be applied retrospec- tively, the proceedings against the accused could not be decided in the light of a law that was not yet in force at the time the offence with which he is charged was committed. 32. If the answer is in the negative, the questions referred for a preliminary ruling should be declared inadmissible without 21 — Without prejudice, however, to the provisions protecting having to consider whether the name trade marks. 'parmesan' is generic or not. Contrary to 22 — The Italian Republic confirmed at the hearing that it has not applied to register the name 'Parmigiano' by itself, or the submission of the German Government, its translation 'parmesan'

36. However, in light of the factual and legal background supplied by the national court, the situations described above are 40. Since the assessment of whether a name purely hypothetical. is generic in terms of the Regulation falls within the remit of the Commission, 27 I take the view that it is not for the Court to take on the task of the Commission on that question. The role of the Court consists

23 — Joined Cases C-289/96, C-293/96 and C-299/96 [1999] ECR I-1541. 24 — Paragraph 88. 37. Furthermore, it is not for the Court to 25 — Articles 4 to 7 and 17 of the regulation. 26 — Inter alia, that of interested parties, the Member States and carry out an assessment of whether the the representatives of an ad hoc committee. name is generic or not, but only to interpret 27 — And, to a lesser extent, of the Council, because under Article 3(3) of the Regulation, before the entry into force the provisions of the Regulation and to of the Regulation, the Council, acting on a proposal from define the criteria to be taken into account the Commission, is to draw up a list of the names of the agricultural products or foodstuffs which are regarded as in carrying out that assessment. being generic.

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simply in reviewing the legality of decisions C — Reply to the preliminary question adopted by the Commission (or the Coun- cil) 28 on the subject, in accordance with Article 230 EC.

42. It follows from the foregoing that I propose that the Court confine its initial assessment to the question whether the Regulation is to be interpreted as meaning that, in a case such as the present, the contested name 'parmesan' falls within the 45. The preliminary question identified scope of the protection that Article 13(1) of above consists therefore in determining the Regulation confers on PDOs. whether the term 'parmesan' must be regarded as the translation of the composite name 'Parmigiano Reggiano', which is 28 — Ibid. registered.

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46. According to the national court the 49. It is not in dispute that the noun answer to that question is necessarily in the 'parmesan' is the literal translation in affirmative in that the noun 'parmesan' is several languages — in particular in Ger- the literal translation of the name 'Parmi- man, English and French — of the Italian giano Reggiano'. It concludes from this that term 'Parmigiano', on its own. Fur- the system of protection that the Regu- thermore, for the majority of the interven- lation confers on the PDO 'Parmigiano ing governments, with the exception of the Reggiano' extends to the name 'parme- German and Austrian Governments, it san'. 29 alone denotes, in translation, the composite designation of origin 'Parmigiano Reg- giano'.

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deriving from the town of Parma, in covered by registration, namely the cheese Emilia-Romagna. Originally the term 'par- 'Parmigiano'. Similarly, use of the mesan' or 'Parmigiano' was also used to expression 'Reggiano' by itself does not refer to the inhabitants of that town as well enable the user to exploit the reputation as to designate any goods produced there. attaching to the protected product, 'Parmi- From the 16th century, however, the word giano'. In other words, the term 'Parmigia- 'Parmigiano' was associated in various no' is the essential component of the PDO texts with the latin word caseus (cheese). 'Parmigiano Reggiano'. Since the cheese has increased in renown, the adjective indicating its provenance has been sufficient to call it to mind unequivo- cally, and has been used by itself.

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'Parmigiano' or 'parmesan' 33 and 'Parmi- its translation 'parmesan'. According to giano Reggiano' is the reason why the Article 13(3) of the Regulation, that name Italian Government applied for the regis- may not become generic. Accordingly, I tration of that 'composite' name alone. In invite the Court to reject the plea of other words, the application to register inadmissibility raised by the German Gov- those two names separately was not con- ernment. templated because it would have meant that the protection of two different prod- ucts was being sought, whilst in the present case it refers to one and the same product originating from a specific region in Italy.

IV — The content of the questions sub- mitted by the national court

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Italian law further prohibits the produc- questions, asks the Court to define the tion, by producers and undertakings estab- necessary conditions for application of the lished in Italy, of parmesan that does not system of exemptions. comply with the specification of the regis- tered PDO even if the product in question is intended to be marketed in Member States w h i c h c o u l d t a k e a d v a n t a g e of Article 13(2) of the Regulation. The national court is concerned about the 60. Since a negative response to the first compatibility of that particular provision question would affect the assessment of the of Italian law with the system of exemp- other questions submitted by the national tions established by Article 13(2). court, it is necessary to look at that question first.

BIGI

used in the Member States ...', '... not [to] mean any operator, whether or not estab- prejudice producers ...' and to grant those lished in the territory of the Member State producers an 'adjustment period'. of registration, who markets products not covered by registration under a registered name, provided that those products are intended to be marketed in the territory of a Member State which maintains a national system permitting the use of registered names under Article 17 of the Regulation 64. There are two possible interpretations to refer to comparable products not of those provisions. covered by that registration. That is the 'wide' interpretation. On that view, an undertaking such as Castelli, established in Italy, the Member State of registration of the PDO in issue, could not be prevented from making, in Italy, parmesan that does 65. The first lies in taking the term 'pro- not meet the requirements of the PDO, ducers' in the third recital of Regulation even if that cheese is intended for export. No 535/97, and 'undertaking' in the sec- ond indent of the first subparagraph of Article 13(2) of the Regulation to mean only those operators established in the territory of Member States who maintain national systems permitting the use of names registered under Article 17 of the Regulation to refer to comparable products that are not covered by that registration. Operators established in the territory of the Member State of registration are thus 67. In my view, given the purpose of excluded from the scope of the system of Article 13(2), its general wording, the pur- exemptions. That interpretation is restrict- pose of the Regulation and, finally, the ive in that it confines the scope of the provisions of Article 3(1) of the Regu- system of exemptions to certain strictly lation, the correct interpretation is the defined producers or undertakings. On that restrictive one. view, an undertaking such as Castelli, established in Italy, the Member State of registration of the PDO in issue, may be prevented from making, in Italy, parmesan that does not meet the requirements of the PDO even if that cheese is intended for export.

69. Only those operators established in a 71. That strict interpretation also respects Member State that maintains a national both the purposes of the Regulation, which system permitting the use of registered consist, inter alia, in ensuring consumer names under Article 17 of the Regulation protection and fair competition, 39 and the to refer to comparable products not wording of the third indent of the first covered by that registration are required paragraph of Article 13(2) of the Regu- to adapt their operations, in particular to lation. 4 0 modify their production units, so as to comply with the Community rules protect- ing PDOs. By contrast, those operators established in a Member State that has applied for registration under Article 17 of the Regulation have already had to adapt their operations to meet those legal require- 72. The third indent of the first subpara- ments. 3 8 This is because Article 17 graph of Article 13(2) of the Regulation expressly provides that only those Member provides that, by way of derogation, the States who have established a protection use of registered names to market products system for names they wish to register may that do not comply with the specification of obtain such registration under that article. the product covered by registration, is The domestic law of the Member State of subject to the condition that 'the labelling registration therefore prohibited the manu- clearly indicates the true origin of the facture and marketing under a protected product'. name of products not covered by regis- tration. In other words, the domestic legal order of that State, even before the adop- tion of the Regulation, carried specific consequences for the exercise of their operations. It is therefore unnecessary to grant an 'adjustment period' to such econ- omic units. 73. It appears from those provisions that the application of the system of exemptions must, in any event, allow consumers to be informed as to the geographical origin of the product. It is necessary to ensure that they are not misled as to the quality they are entitled to expect from a product marketed under a name designating a PDO — which therefore indicates a spe- cific place or region — although it has not been produced, processed or prepared in 70. The strict interpretation proposed of the geographical area of the PDO and does the terms 'producers' and 'undertakings' not correspond to the particular character- therefore complies with the objective of Article 13(2) of the Regulation. 39 — See the sixth and seventh recitals to the preamble of the Regulation. 40 — Another of its objectives is the harmonisation of national 38 — In the present case, the Castelli undertaking stated that it practices for protecting designations of origin and geo- has, in Italy, three production units that comply with the graphical indications (see, in particular, the seventh recital requirements of Article 13(1) of the Regulation protecting of the preamble to the Regulation) so as to ensure the free the PDO 'Parmigiano Reggiano'. circulation of products throughout the Community.

74. I will illustrate my argument by way of an example. During the transitional period of exemption, operators who lawfully mar- ket cheese under the designation 'parmes- Thus, while respecting the provisions of the an' in Britain would be permitted to carry Regulation, the marketing of that cheese by on that activity provided that they show an undertaking such as Castelli would that the cheese originates in the United mislead the reasonably informed consumer Kingdom. 41 Any confusion with parmesan, as to the nature of the product he was made in Italy and covered by registration, buying. That confusion stems from the fact would therefore be impossible, or made that the product marketed in the United more difficult, for the British consumer. Kingdom by an undertaking such as Cas- telli would appear to be the product covered by registration, but would not correspond to the PDO for that product. Indeed it would be reasonable to believe that a parmesan labelled 'made in the United Kingdom' and a parmesan labelled 75. If the 'wide' interpretation were 'made in Parma' were two different types of upheld, it would not be possible to ensure cheese, though that would not be the proper consumer protection. case. 43 That appearance would therefore facilitate the legitimate mistake of the British consumer as to the type of parmesan he was buying. 44 Accordingly, consumer protection, a purpose clearly sought by the Regulation, would not be ensured. 76. To return to the above example, under the 'wide' interpretation, an undertaking such as Castelli would be permitted to sell to the United Kingdom under the 'parmes- an' label, cheese that did not comply with the specification of the registered PDO, if the requirements of Article 13(2) were 77. Application of the system of exemp- met. 42 In particular, under the third indent tions must also ensure fair competition of the first subparagraph of that provision, between the different economic operators. the labelling of the product thus marketed 43 — According to Castelli itself. I will return to this below (see footnote 48). 41 — Provided always that the other conditions laid down by 44 — That confusion is heightened by the fact that, usually, the Article 13(2) of the Regulation are respected. label includes illustrations which immediately call Italy to 42 — That is, the cumulative conditions provided by that text. mind.

45 — The producers of cheese covered by the PDO 'Parmigiano 80. The strict interpretation would also Reggiano' made in Italy. give those Member States who wished to 46 — See paragraph 74 of this Opinion. obtain registration of a name as a PDO the 47 — Castelli admitted, at the hearing, that its aim was not to infringe Italian law or Community law for the protection best opportunity to defend their claim of the PDO 'parmesan', but to preserve its market share in against those States who contended that other Community countries that do not prohibit the sale of cheese under the name 'parmesan' which does not comply with the specification of the registered PDO. Its purpose is the name in question had become generic. essentially economic and therefore consists, on its own admission, in facing up to its competitors who market cheeses of an identical type to that made in Italy, with a view to marketing it outside the national frontiers under 48 — Such as the parmesan intended for export, made in Italy by the label 'parmesan'. Castelli.

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81. Indeed, under Article 3(1) of the Regu- 84. Finally, in accordance with the Court's lation, the criteria which must be taken into settled case-law, 51 any derogation from a consideration in establishing whether or principle must be strictly interpreted. Since not a name has become generic include 'the the scheme of Article 13(2) of the Regu- existing situation in the Member State in lation derogates 52 from the principle of which the name originates . . . ' . 49 protection of PDOs laid down by Article 13(1), it should therefore be strictly interpreted.

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nation when applied to a product not that designation might be found to be covered by the registration, but comparable lawful by application of Article 13(2). to the product registered under that name, on the ground that it is made in the territory of the Member State of regis- tration, even if the product in question is intended to be marketed exclusively in the 87. Having regard to the reply given to that territory of another Member State where first question, the other questions do not call for a reply.

Conclusion

88. In those circumstances, and for the reasons set out above, I propose that the Court give the following reply to the questions submitted by the Parma District Court:

Article 13(2) of Council Regulation (EEC) N o 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, as amended by Council Regulation (EC) N o 535/97 of 17 March 1997 must be interpreted as allowing a Member State, on whose application a PDO was registered, to prohibit the commercial use of that designation when applied to a product not covered by the registration, but comparable to the product registered under that name, on the ground that it is made in the territory of the Member State of registration, even if the product in question is intended to be marketed exclusively in the territory of another Member State where that designation might be found to be lawful by application of Article 13(2) of that Regulation.