Opinion of the Advocate General — ECLI:EU:C:2020:730
Date: 2020-09-17
Language of the case: French
Subject matter: Agriculture and Fisheries;Foodstuffs;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: France

Summary C-490/19 — 1 
Case C-490/19 
Summary of the request for a preliminary ruling under Article 98(1) of the 
Rules of Procedure of the Court of Justice 
Date lodged:  
26 June 2019 
Referring court:  
Cour de cassation (France) 
Date of the decision to refer:  
19 June 2019 
Applicant:  
Syndicat interprofessionnel de défense du fromage Morbier 
Defendant:  
Société Fromagère du Livradois SAS 
  
I. The dispute 
1 The dispute is between the Syndicat interprofessionnel de défense du fromage 
Morbier (‘the Syndicat’), which was recognised on 18 July 2007 by the Institut 
national des appellations d’origine (National Institute for Designations of Origin 
(INAO)) as the organisation responsible for the protection of ‘Morbier’, and 
Fromagère du Livradois, a company that produces and markets cheese. 
2 ‘Morbier’ cheese has enjoyed registered designation of origin (AOC) 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. That decree provided for a transitional period for undertakings situated 
outside that geographical area which had produced and marketed cheeses under 
the name ‘Morbier’ continuously, in order to enable them to continue to use that 
name without the indication ‘AOC’ for a five-year period from the publication of 
the registration of the designation of origin ‘Morbier’ as a protected designation of 
origin (PDO) by the Commission of the European Communities, in accordance 
with Article 5 of Council Regulation (EEC) No 2081/92 of 14 July 1992 on the 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING — CASE C-490/19 
 
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protection of geographical indications and designations of origin for agricultural 
products and foodstuffs (OJ 1992 L 208, p. 1). 
3 The decree of 22 December 2000 describes Morbier as ‘a pressed, uncooked 
cheese made from cow’s milk, … [which] has a continuous, joined, horizontal, 
central black mark throughout each slice …’. 
4 Pursuant to Regulation (EC) No 1241/2002, * the name ‘Morbier’ was entered in 
the register of PDOs. The specification submitted, in accordance with Article 4 of 
Regulation No 2081/92, in support of the PDO application with a view to its 
registration was amended slightly by Implementing Regulation (EU) 
No 1128/2013: ** 
‘“Morbier”’ is a cheese made from raw cow’s milk, … Throughout each slice the 
cheese has a continuous, joined, horizontal, central black mark …’. 
5 In accordance with the decree of 22 December 2000, Fromagère du Livradois, 
which had produced Morbier since 1979, was authorised to use the name 
‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it 
substituted for that name ‘Montboissié du Haut Livradois’. 
6 Moreover, on 5 October 2001 Fromagère du Livradois filed an application in the 
United States for the United States trade mark ‘Morbier du Haut Livradois’, which 
it renewed in 2008 for a period of ten years, and on 5 November 2004 it filed an 
application for the French trade mark ‘Montboissier’ for goods in Class 29. 
7 Accusing Fromagère du Livradois of infringing the protected designation and 
committing acts of unfair and parasitic competition by producing and marketing a 
cheese that reproduces the visual appearance of ‘Morbier’, the product protected 
by the PDO, in order to create confusion with that product and to benefit from the 
renown of the image associated with that product, without having to conform to 
the specification of the designation of origin, on 22 August 2013 the Syndicat 
brought proceedings against Fromagère du Livradois before the Tribunal de 
grande instance de Paris (Regional Court, Paris). The Syndicat requested that the 
defendant be ordered to cease any direct or indirect commercial use of the name of 
 
*  Commission Regulation (EC) No 1241/2002 of 10 July 2002 supplementing the Annex to 
Regulation (EC) No 2400/96 on the entry of certain names in the ‘Register of protected 
designations of origin and protected geographical indications’ provided for in Council 
Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of 
origin for agricultural products and foodstuffs (Gailtaler Speck, Morbier, Queso Palmero or 
Queso de la Palma, Thrapsano extra virgin olive oil, Turrón de Agramunt or Torró d’Agramunt) 
(OJ 2002 L 181, p. 4). 
**  Commission Implementing Regulation (EU) No 1128/2013 of 7 November 2013 approving 
minor amendments to the specification for a name entered in the register of protected 
designations of origin and protected geographical indications (Morbier (PDO)) (OJ 2013 L 302, 
p. 7). 
 
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the PDO ‘Morbier’ for products not covered by it, any misuse, imitation or 
evocation of the PDO ‘Morbier’, any other false or misleading indication as to the 
provenance, origin, nature or essential qualities of the product by any means liable 
to convey a false impression as to the origin of the product, any other practice 
liable to mislead the consumer as to the true origin of the product and, in 
particular, any use of a black line separating two parts of the cheese, and to 
compensate it for its loss. 
8 By judgment of 14 April 2016, that court dismissed all of the Syndicat’s claims. 
By the judgment under appeal, the cour d’appel de Paris (Court of Appeal, Paris) 
confirmed the judgment. 
9 The court of appeal ruled out any misconduct by Fromagère du Livradois in 
respect of the filing, use, renewal and maintenance of the United States figurative 
mark ‘Morbier du Haut Livradois’ containing the word ‘Morbier’ and in respect of 
the use of the name ‘Morbier’ on its cheeses. It also ruled out misconduct by 
Fromagère du Livradois in respect of the filing of the French trade mark 
‘Montboissier’ and its use. 
10 Moreover, it took the view that the marketing of a cheese which has one or more 
features contained in the specification for Morbier and therefore resembles it did 
not constitute misconduct. After stating that the PDO legislation was not intended 
to protect the appearance of a product or its features as described in its 
specification, but its name, and therefore it did not prohibit the production of a 
product using the same techniques as those set out in the rules applicable to the 
geographical indication, and after noting that, in the absence of an exclusive right, 
reproducing the appearance of a product did not constitute misconduct but fell 
within the scope of the freedom of trade and industry, the court of appeal held that 
the features relied on by the Syndicat, in particular the blue horizontal line, related 
to a historical tradition, an ancestral technique present in other cheeses, which 
were implemented by Fromagère du Livradois even before it obtained the PDO 
and which are not dependent on the investments made by the Syndicat or its 
members. 
The court of appeal held that, although the right to use vegetable carbon is 
conferred only on cheese with the PDO ‘Morbier’, in order to comply with United 
States legislation, Fromagère du Livradois had to replace it with grape 
polyphenol, and therefore the two cheeses cannot be likened as a result of that 
feature. Noting that Fromagère du Livradois had claimed other differences 
between the Montboissié and the Morbier cheeses relating, inter alia, to the use of 
pasteurised milk in the former and raw milk in the latter, the court concluded that 
the two cheeses were distinct and that the Syndicat was seeking to extend the 
protection of the designation ‘Morbier’ for commercial interests, which was 
unlawful and contrary to the principle of free competition. 
11 The Syndicat has lodged an appeal on a point of law against that judgment. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING — CASE C-490/19 
 
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12 It submits, first, that a designation of origin is protected against any practice liable 
to mislead the consumer as to the true origin of the product and that, in holding, 
however, that only the use of the name of the protected designation of origin is 
prohibited, the court of appeal infringed Article 13 of Council Regulation (EC) 
No 510/2006 of 20 March 2006 on the protection of geographical indications and 
designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, 
p. 12) and Article 13 of Regulation (EU) No 1151/2012 of the European 
Parliament and of the Council of 21 November 2012 on quality schemes for 
agricultural products and foodstuffs (OJ 2012 L 343, p. 1). 
13 It submits, next, that by merely stating, first, that the features relied on by the 
Syndicat related to a historical tradition and were not dependent on the 
investments made by the Syndicat and its members and, second, that the 
‘Montboissié’ cheese marketed since 2007 by Fromagère du Livradois was 
different from ‘Morbier’ cheese, without investigating, as requested, whether 
Fromagère du Livradois’ practices (copying the ‘cinder line’ feature of Morbier 
and other characteristics of the cheese, in particular) were liable to mislead the 
consumer as to the true origin of the product, the court of appeal’s decision had no 
legal basis in the light of that legislation. 
14 The Syndicat also submits that the cour d’appel de Paris (Court of Appeal, Paris) 
misinterpreted those provisions in so far as it held that the renewal of the trade 
mark ‘Morbier du Haut Livradois’ in 2008 did not constitute misconduct, and nor 
did maintaining that trade mark until its cancellation in 2013, since Fromagère du 
Livradois submitted that, after 2007, it no longer used that trade mark, whereas a 
designation of origin is protected against any evocation by a competing sign, 
irrespective of whether or not that competing sign is used. 
15 Finally, the Syndicat takes the view that the cour d’appel de Paris (Court of 
Appeal, Paris) infringed those provisions in so far as it merely noted that it had not 
been demonstrated that the wrongful use of the name ‘Morbier’ after 11 July 2007 
was imputable to Fromagère du Livradois, without examining, as requested, 
whether Fromagère du Livradois had failed to take all necessary measures in order 
to prevent the name ‘Morbier’ being used by third parties with whom it had had 
business dealings, as the Syndicat, for its part, has not given any formal 
instructions to third-party operators, whereas a designation of origin is protected 
against any wrongful evocation that the defendant could have prevented and the 
only stipulation on the defendant company’s invoices, that its cheese had to be 
sold under the designation ‘Montboissié’, was inadequate in that regard. 
16 Furthermore, a portion of the dispute concerns provisions of French national law 
regarding registered designations of origin, unfair competition and civil liability. 
II. Legal framework 
17 The European Union introduced protection for protected designations of origin 
(PDO) and protected geographical indications (PGI) for agricultural products and 
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foodstuffs in Regulation No 2081/92, which was replaced by Regulation 
No 510/2006 and then by Regulation No 1151/2012. 
18 Article 13(1) of all three regulations sets out the types of acts which are 
prohibited: 
‘Registered names shall be protected against: 
(a) any direct or indirect commercial use of a registered name in respect 
of products not covered by the registration in so far as those products are 
comparable to the products registered under that name or in so far as using 
the name exploits the reputation of the protected name; 
(b) any misuse, imitation or evocation, even if the true origin of the 
product is indicated or if the protected name is translated or accompanied 
by an expression such as “style”, “type”, “method”, “as produced in”, 
“imitation” or similar; 
(c) any other false or misleading indication as to the provenance, origin, 
nature or essential qualities of the product, on the inner or outer packaging, 
advertising material or documents relating to the product concerned, and 
the packing of the product in a container liable to convey a false impression 
as to its origin; 
(d) any other practice liable to mislead the consumer as to the true origin 
of the product’. 
III. Findings of the Cour de cassation (Court of Cassation) 
19 The Syndicat submits that it is clear from the wording of Article 13(1) of each of 
those regulations that a PDO is not protected solely against the use of the 
registered word itself, but also against ‘any other practice’ besides the use or 
evocation of the protected name, where that practice is liable to mislead the 
consumer as to the true origin of the product. The courts adjudicating on the 
substance of the case must examine whether the practices attributable to an 
economic operator are liable to mislead the consumer; this may be caused by 
copying the presentation which is characteristic of the product, without the name 
of the product having to be reproduced in order for infringement to occur. 
20 It submits that, in the present case, by stating that only the use of the name 
Morbier could have constituted an infringement of the PDO ‘Morbier’, the court 
of appeal adopted a position contrary to the wording of Article 13 of the 
regulations cited above and did not address the question as to whether the 
presentation of the ‘Montboissié’ cheese was capable of misleading the consumer 
into believing that he is looking at a ‘Morbier’ cheese. 
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21 It adds that the court of appeal merely found that the features invoked by the 
Syndicat related to a historical tradition, that they had been used since 1979 by 
Fromagère du Livradois and were not dependent on the investments made by the 
Syndicat, whereas those factors have no influence since any practice aiming to 
mislead the consumer into confusing ‘Montboissié’ cheese with ‘Morbier’ cheese 
has been prohibited since 2007. Finally, it complains that the court of appeal 
focused on the differences highlighted by Fromagère du Livradois, which 
submitted that the public for which its cheese was intended was canteens and 
hospitals, without specifically examining whether that company’s practices were 
liable to mislead the consumer as to the true origin of the product. 
22 For its part, Fromagère du Livradois submits that the PDO protects products from 
a defined region and only those products are able to use the protected name. It 
does not prohibit other producers from producing and marketing similar products, 
where they do not suggest that they are covered by the designation in question and 
as long as that marketing is not accompanied by any practice capable of giving 
rise to confusion, in particular by the misuse or the evocation of the protected 
designation. 
23 It also submits that a ‘practice that is liable to mislead the consumer as to the true 
origin of the product’, within the meaning of Article 13(d) of the regulations, must 
necessarily focus on the ‘origin’ of the product; this must therefore be a practice 
which causes the consumer to think that he is looking at a product with the PDO 
in question. It considers that that ‘practice’ cannot result merely from the 
appearance of the product per se, without any indication on its packaging referring 
to the protected origin. 
24 It relies on the observations of the ministre de l’Économie, des Finances et de 
l’Industrie (Minister for the Economy, Finance and Industry), those of the INAO 
(Institut national de l’origine et de la qualité (National Institute of Origin and 
Quality)) and, finally, a decision of the Conseil d’État (Council of State) of 
5 November 2003 on the action brought against the decree of 22 December 2000, 
which agree that only the use of the name ‘Morbier’ is prohibited for cheeses 
produced outside the protected designation area. 
25 It submits that, by recalling, in the present case, that nothing prohibited the 
production of a product using the same techniques as those set out in the rules 
applicable to the geographical indication, the court of appeal rightly considered 
that only the use of a sign capable of constituting a misuse of the PDO was 
prohibited and that, by continuing to produce and market the cheeses it 
manufactured, Fromagère du Livradois was not guilty of ‘prohibited practices’. 
The court of appeal added that it is immaterial that those cheeses contain the 
‘cinder line’ feature of Morbier or that they have the same ‘characteristics’. By a 
judgment of 5 November 2003, the Conseil d’État (Council of State), in an action 
for annulment of the décret du 22 décembre 2000 relatif à l’appellation d’origine 
contrôlée « Morbier » (decree of 22 December 2000 on the registered designation 
of origin ‘Morbier’), held that the objective of both the national and Community 
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rules governing the protection of designations of origin is to promote the quality 
of products with a registered name, in particular by requiring that the production, 
processing and preparation of those products is carried out in the defined area; that 
those rules do not preclude the free movement of other products which do not 
enjoy that protection. 
26 The Court of Justice of the European Union does not appear to have given a ruling 
on the question raised in the present case. 
27 However, in point 3.4 of its ‘Guidelines for examination of European Union trade 
marks’, Part B — Examination, Section 4 — Absolute grounds for refusal, 
Chapter 10 — Geographical indications, Article 7(1)(j) EUTMR, entitled ‘Other 
misleading indications and practices’, the European Union Intellectual Property 
Office (‘the Office’) states, with regard to Article 13(1)(c) and (d) of Regulation 
No 1151/2012, that, although it very much depends on the particularities of each 
case, each of which must therefore be assessed individually, a European Union 
trade mark may be considered misleading when, for example, it contains 
figurative elements that are typically associated with the geographical area in 
question, such as well-known historical monuments, or when it reproduces a 
particular shape of a product. The Office states that the above must be interpreted 
in a restrictive way and that it ‘refers solely to [European Union trade marks] that 
depict ... a singular shape of the product that is described in the specifications of 
the PDO/PGI’. 
28 Furthermore, names consisting of geographical terms are not the only signs 
entitled to the protection provided for in Regulation No 1151/2012. Certain signs, 
be they word signs or not, are also protected in so far as they are corollaries to 
those geographical indications. 
29 It is therefore accepted that traditional, non-geographical terms, relating to wines 
and spirits, such as ‘traditional method’, ‘reserve’, ‘clos’, ‘village’ or ‘château’ are 
reserved for certain designations. The Court has acknowledged the validity of 
reserving the designation ‘méthode champenoise’ for wine with the designation of 
origin ‘Champagne’ (judgment of 13 December 1994, SMW Winzersekt, 
C-306/93, EU:C:1994:407). 
30 It is also accepted that certain shapes that are characteristic of the geographical 
origin of a product may be reserved for products bearing the protected designation 
of origin. Thus, Article 56 of Commission Delegated Regulation (EU) 2019/33 
supplementing Regulation (EC) No 1308/2013, * and Annex VII to that 
regulation, to which reference is made in Article 56, reserves ‘flûte d’Alsace’ 
bottles for wines produced from grapes harvested on French territory bearing the 
 
*  Commission Delegated Regulation (EU) 2019/33 of 17 October 2018 supplementing Regulation 
(EU) No 1308/2013 of the European Parliament and of the Council as regards applications for 
protection of designations of origin, geographical indications and traditional terms in the wine 
sector, the objection procedure, restrictions of use, amendments to product specifications, 
cancellation of protection, and labelling and presentation (OJ 2019 L 9, p. 2). 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING — CASE C-490/19 
 
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protected designations of origin ‘Alsace’ or ‘vin d’Alsace’, ‘Alsace Grand Cru’, 
‘Crépy’, ‘Château-Grillet’, ‘Côtes de Provence’ red and rosé, ‘Cassis’, ‘Jurançon’, 
‘Jurançon sec’, ‘Béarn’, ‘Béarn-Bellocq’ rosé and ‘Tavel’ rosé. 
That regulation provides that a specific type of bottle may be reserved for wines 
with a protected designation of origin provided that that bottle type has ‘been 
exclusively, genuinely and traditionally used for the last 25 years for a grapevine 
product bearing a particular protected designation of origin or geographical 
indication’ and that ‘its use shall evoke for consumers a grapevine product bearing 
a particular protected designation of origin or geographical indication’. The 
regulation states that ‘the use of bottles having a particular shape for certain 
grapevine products bearing a protected designation of origin or geographical 
indication is a long-established practice within the Union and such use can evoke 
certain characteristics or the provenance of those grapevine products in the mind 
of consumers’, which justifies those bottle shapes being reserved for the wines in 
question. 
31 With regard to cheese products, a decree regarding the AOC ‘Beaufort’, now 
repealed, extended the protection of the designation of origin to the characteristic 
concave heel of the Beaufort cheese. 
32 In general, decrees acknowledging designations of origin in respect of cheeses 
contain rules on their characteristic shapes. Thus, the decree of 22 December 2000 
on the AOC ‘Morbier’ described the external appearance of that cheese and its 
internal composition. A slightly amended description of the appearance of that 
cheese is now contained in the specification for the designation of origin 
‘Morbier’ in its consolidated version resulting from Regulation No 1128/2013. 
33 Therefore, there is doubt as to the interpretation of the expression ‘any other 
practice’ in Article 13(1) of Regulation No 510/2006 and the same article of 
Regulation No 1151/2012 as being a particular form of infringement of a 
protected designation if it is liable to mislead the consumer as to the true origin of 
the product. 
34 The question therefore arises as to whether the reproduction of physical 
characteristics of a product protected by a PDO may constitute a practice that is 
liable to mislead the consumer as to the true origin of the product, as prohibited by 
Article 13(1) of the regulations cited above. 
35 That question is in fact whether the presentation of a product that is protected by a 
designation of origin, in particular the reproduction of the shape or the appearance 
which are characteristic of it, is capable of constituting an infringement of that 
designation, despite the fact that the name has not been reproduced. 
36 It is therefore appropriate to consult the Court of Justice of the European Union. 
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IV. The question referred for a preliminary ruling 
Must Article 13(1) of Council Regulation No 510/2006 of 20 March 2006 and 
Article 13(1) of Regulation No 1151/2012 of the European Parliament and of the 
Council of 21 November 2012 be interpreted as prohibiting solely the use by a 
third party of the registered name, or must they be interpreted as prohibiting the 
presentation of a product protected by a designation of origin, in particular the 
reproduction of the shape or the appearance which are characteristic of it, which is 
liable to mislead the consumer as to the true origin of the product, even if the 
registered name is not used?