Opinion of Mr Advocate General La Pergola delivered on 12 March 1998. - Criminal proceedings against Yvon Chiciak and Fromagerie Chiciak (C-129/97) and Jean-Pierre Fol (C-130/97). - Reference for a preliminary ruling: Tribunal de grande instance de Dijon - France. - Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - Exclusive competence of the Commission - Scope of the protection of names comprising several terms. - Joined cases C-129/97 and C-130/97.



European Court reports 1998 Page I-03315



Opinion of the Advocate-General

1 By judgment of 26 February 1997, the Tribunal de Grande Instance (Regional Court), Dijon, referred the following questions to the Court for a preliminary ruling :

`(1) Does Council Regulation No 2081/92 of 14 July 1992 preclude, as from its entry into force, any residual power on the part of the Member States to alter a pre-existing designation of origin?

(2) Do the particulars given in the form of footnotes to the annex to Regulation No 1107/96 of 12 June 1996 constitute an exhaustive list of the unprotected parts of names made up of several terms?'

2 Before explaining the background to the dispute, a brief overview of the relevant Community legislation should be given.

Regulation (EEC) No 2081/92 (1) `lays down rules on the protection of designations of origin and geographical indications of agricultural products intended for human consumption'. (2) The protection provided for by that regulation is conditional upon registration of the names concerned in the `Register of protected designations of origin and protected geographical indications'. That registration must be carried out in accordance with the detailed rules laid down by the regulation itself. (3) The application for registration is sent to the Member State in which the geographical area is located; (4) that Member State checks that the application is justified, before forwarding it to the Commission, which, for its part, carries out a formal investigation in order to establish that the conditions laid down by the regulation for registration are satisfied. If so, the Commission publishes the application in the Official Journal of the European Communities. If no objection is raised by persons with any conflicting interest, the Commission enters the name in the aforementioned register.

Article 4 provides that `to be eligible to use a protected designation of origin (PDO) or a protected geographical indication (PGI) an agricultural product or foodstuff must comply with a specification', which must include, in particular, `the name of the agricultural product or foodstuffs, including the designation of origin or the geographical indication'. (5)

A special procedure is then laid down for any amendment of the specifications. According to Article 9, `the Member State concerned may request the amendment of a specification, in particular to take account of developments in scientific and technical knowledge or to redefine the geographical area. The Article 6 procedure shall apply mutatis mutandis. The Commission may, however, decide, under the procedure laid down in Article 15, not to apply the Article 6 procedure in the case of a minor amendment'.

The scope of the protection granted to registered names is described in Article 13, according to which:

`1. Registered names shall be protected against:

(a) any direct or indirect commercial use of a name registered 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 public as to the true origin of the product.

Where a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff shall not be considered to be contrary to (a) or (b) in the first subparagraph.'

Article 17 introduces a `simplified' procedure for the registration of existing names. That article provides as follows:

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

2. In accordance with the procedure laid down in Article 15, the Commission shall register the names referred to in paragraph 1 which comply with Articles 2 and 4. Article 7 shall not apply. However, generic names shall not be added.

3. Member States may maintain national protection of the names communicated in accordance with paragraph 1 until such time as a decision on registration has been taken.'

Regulation No 2081/92 entered into force on 26 July 1993 and was subsequently amended in part by Regulation (EC) No 535/97. (6)

3 The national provisions relevant to this case can be summarised as follows. By decree of 14 May 1991, the French authorities introduced the designation `Époisses de Bourgogne' and defined the specific characteristics of products eligible to use that designation. The French Government applied for registration of the designation `Époisses de Bourgogne' using the simplified procedure under Article 17 of Regulation No 2081/92; the Commission proceeded to register it within the framework of Regulation (EC) No 1107/96. (7) By decree of 14 April 1995, however, the French authorities amended the earlier decree of 1991; according to the national legislation, the protected designation is no longer `Époisses de Bourgogne,' but `Époisses'.

The facts of the dispute in the main proceedings are set against that legal background. Yvon Chiciak and Jean-Pierre Fol are French cheese makers who were prosecuted for having affixed labels bearing the designation `Époisses' to products which they subsequently marketed, when those products did not comply with the requirements imposed by the 1995 decree for use of that designation. Before the national court, the defendants claimed that the aforementioned decree of 1995 was unlawful. In their submission, since Regulation No 2081/92 entered into force, the Member States no longer have power to alter a name registered pursuant to that regulation; power to do so rests exclusively with the Commission. They consider that the French Government was therefore not entitled to alter the name `Époisses de Bourgogne' introduced by the 1991 decree and registered at Community level, in order to change it into `Époisses', the name prescribed by the 1995 decree.

The national court considers an interpretation of certain elements of the aforementioned Community legislation to be necessary for the resolution of the dispute and therefore referred the questions on which the Court is requested to give a preliminary ruling.

4 By the first question, the national court essentially asks the Court whether or not a Member State has power to alter a designation of origin in respect of which that Member State has requested and obtained registration pursuant to Regulation No 2081/92.

The French Government submits that such a power exists. However, I would say at once that I do not share that view. In my opinion, the essential elements for resolving the issue have been provided by the national court itself in the order for reference. The system introduced by the regulation confers on the Commission a central role in the procedure leading to registration, whilst Member States are, so to speak, relegated to the role of mere applicants: that is to say, they have to collect the applications submitted by the persons concerned in order to assess them from the point of view of compliance with the requirements laid down by the Community legislation for the purposes of registration, and forward the application to the Commission. It is for the latter to make the entry in the appropriate register; the protection guaranteed by the regulation stems from that registration. In that respect, it should be borne in mind here that the whole point of the Community rules in question is to ensure uniform protection, that is to say protection which applies throughout the Community, for names which comply with the requirements of the regulation. That uniform protection results, precisely, from registration carried out on the basis of the rules specifically laid down by the regulation, which obviously include those which allocate powers between the Commission and the Member States.

In that general context, the specific problem in the present case is dealt with in an extremely precise manner in the regulation. When applying for registration, the Member States must also submit the `product specification' which must, itself, state, in accordance with Article 4(2)(a), `(a) the name of the agricultural product or foodstuffs, including the designation of origin or the geographical indication'. (8) The chosen name is therefore included in the product specification. Should it be necessary to alter the product specification in any way and, consequently, the name, Article 9 of the regulation provides that the procedure specifically laid down for that purpose in Article 6 is to be applied. (9)

In my opinion, the aforementioned provision supplies a good answer to the question referred to the Court by the national court. In the present case, contrary to what the governments which submitted written observations appear to think, the question is not whether it is possible to envisage a separate sphere of national protection of designations of origin which exists, as it were, on a plane parallel to and separate from that of the guarantee ensured by the Community legislation. We are here faced with a different and more specific problem, namely whether a Member State, which has registered a name in accordance with the regulation, may subsequently alter it without following the procedure specifically laid down for that purpose by the regulation, and even in manifest breach of its provisions. In my opinion, the answer can only be negative. When a Member State decides to avail itself of the protection conferred by the regulation in respect of a designation of origin and therefore applies for and obtains registration, it must then follow logically the procedural rules laid down by that regulation, including those relating to any alterations. That is stated unambiguously by the aforementioned Article 9, and I do not see how any other approach could be justified.

Consequently, in so far as the French decree of 1995 changed the name `Époisses de Bourgogne' into `Époisses', it made an improper alteration to a designation of origin registered in accordance with the Community requirements in force. In doing so, the French authorities made the alteration by adopting a unilateral act, when they should have put into effect the special procedure laid down in Article 9.

5 Nor do I find any merit in the French Government's argument, according to which the national decree at issue in the main proceedings finds justification in Regulation No 535/97. In particular, the French Government refers to the provision which introduced the possibility for a Member State which has requested registration to grant `on a national level, a protection in the sense of the present Regulation to the name forwarded'; that protection may also be granted `in connection with an application for the amendment of the product specification'. It is precisely on the latter point that the French Government appears to rely.

However, as the order for reference indicates, at the time the contested decree was adopted the French authorities had not submitted any application for the amendment of the part of the product specification relating to the name. That decree cannot therefore be regarded as protection granted transitionally on a national level `in connection with an application for the amendment of the product specification' for the simple reason that no such application had been made. Furthermore, the regulation referred to by the French Government had not entered into force when the 1995 decree was adopted. The latter can therefore not find any justification in provisions which were not yet in force at the time when it was adopted. (10)

6 By the second question, the national court asks the Court what is the value to be attached to the footnotes in the annex to Regulation No 1107/96 which exclude certain parts of compound names from protection. That regulation contains specifically the list of names registered in accordance with the procedure laid down in Article 17 of Regulation No 2081/92. The footnotes state the parts of compound names in respect of which protection has not been requested (and can therefore not be granted). In the case before the Court the registered name is `Époisses de Bourgogne'. However, there is no footnote indicating the intention to exclude the term `Époisses' from the protection granted by the regulation. The national court consequently asks this Court to explain the significance of the legislative technique of footnotes. In particular the Court is asked to state whether the list in those footnotes is to be considered exhaustive, in the sense that only those parts of names which are expressly mentioned in the footnotes themselves are unprotected, from which it follows - I might add - that, by following an a contrario line of reasoning, those which are not mentioned in the footnotes should therefore be regarded as protected.

In my opinion, the answer to the question must be negative. There are a number of reasons for this. First of all, the aforementioned a contrario reasoning cannot, in my opinion, be conclusive. The national court itself tells us, in the order for reference, that one could follow the same reasoning and reach conflicting conclusions. The annex to the regulation contains certain names comprising several terms in respect of which it is provided - directly in the text and not as a footnote - that protection was granted both to the name as a whole and to each of its terms individually: for example `Cantal or fourme de Cantal or cantalet', `Reblochon or reblochon de Savoie', `Crottin de Chavignol or chavignol' and others. It can therefore be concluded - again on the basis of a contrario reasoning - that when the legislature intended to extend the protection to the various constituent elements of a compound name, provision was expressly and directly made in the text; here again the result is necessarily that the parts of names which are not mentioned remain unprotected.

Thus the a contrario line of reasoning does not seem to be conclusive one way or the other. Perhaps a better way of putting it is that the footnotes in the annex to Regulation No 1107/96 can have only limited importance. As the eighth recital in the preamble to that regulation states, `... certain Member States have made it known that protection was not requested for some parts of designations and this should be taken into account'; (11) as the Commission pointed out, that was because the Member States agreed on the generic nature of the terms concerned and therefore on the usefulness of providing, once and for all, in the regulation that they would not fall within the scope of the protection afforded by the Community legislation. That was specifically achieved by the use of footnotes. In those circumstances, the note is conclusive only when it exists; in such a case, the intention not to protect the part of the name to which the note relates is expressed clearly and unambiguously. By contrast, when - as here - no note has been inserted, the problem of the protection of each constituent term of a compound name can, in my opinion, be examined and resolved only in the light of the general rules laid down in Articles 3 and 13 of Regulation No 2081/92. Protection must therefore be refused in respect of an individual component of the name, even in the absence of any footnote, if the term is of a generic nature; (12) it is for the national court to make that assessment on the basis of a detailed analysis of the factual background which it alone is in a position to know.

To conclude, I do not think it is possible to draw any automatic conclusion from the absence of a footnote. To the contrary, it seems more accurate to say that any protection for an individual part of a registered name stems from the relevant rules laid down by the regulation, in particular by Articles 3 and 13; on the one hand, the term in question must not be generic and, on the other, it must - as is provided in Article 13 - comprise some element of misuse, imitation or evocation with regard to the name as a whole or, in any event, be liable to mislead the public as to the true origin of the products.

Conclusion

7 To conclude, I propose that the Court answer the questions referred for a preliminary ruling as follows:

(1) If a Member State has registered a designation of origin within the framework of Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, any alteration to that designation must take place in accordance with the procedure laid down by that regulation and cannot be made by means of a national legislative measure.

(2) The footnotes in the annex to Commission Regulation (EC) No 1107/96 of 12 June 1996 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Regulation No 2081/92 do not constitute an exhaustive list of the unprotected parts of compound names.

(1) - Council Regulation of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 1992 L 208, p. 1).

(2) - See Article 1. The terms `designation of origin' and `geographical indication' are defined in Article 2(2)(a) and (b).

(3) - See Articles 4 to 7.

(4) - According to Article 5: `1. Only a group or, subject to certain conditions to be laid down in accordance with the procedure provided for in Article 15, a natural or legal person, shall be entitled to apply for registration. For the purposes of this Article, "Group" means any association, irrespective of its legal form or composition, of producers and/or processors working with the same agricultural product or foodstuff. Other interested parties may participate in the group. 2. A group or a natural or legal person may apply for registration only in respect of agricultural products or foodstuffs which it produces or obtains within the meaning of Article 2(2)(a) or (b). 3. The application for registration shall include the product specification referred to in Article 4.'

(5) - See Article 4(2)(a). The other particulars which must be included in the specification are as follows: `(b) a description of the agricultural product or foodstuff including the raw materials, if appropriate, and principal physical, chemical, microbiological and/or organoleptic characteristics of the product or the foodstuff; (c) the definition of the geographical area and, if appropriate, details indicating compliance with the requirements in Article 2(4); (d) evidence that the agricultural product or the foodstuff originates in the geographical area, within the meaning of Article 2(2)(a) or (b), whichever is applicable; (e) a description of the method of obtaining the agricultural product or foodstuff and, if appropriate, the authentic and unvarying local methods; (f) the details bearing out the link with the geographical environment or the geographical origin within the meaning of Article 2(2)(a) or (b), whichever is applicable; (g) details of the inspection structures provided for in Article 10; (h) the specific labelling details relating to the indication PDO or PGI, whichever is applicable, or the equivalent traditional national indications; (i) any requirements laid down by Community and/or national provisions.'

(6) - Council Regulation of 17 March 1997 amending Regulation No 2081/92 (OJ 1997 L 83, p. 3).

(7) - Commission Regulation of 12 June 1996 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Regulation No 2081/92 (OJ 1996 L 148, p. 1).

(8) - Emphasis added.

(9) - The text of Article 9 provides that, in the event of a minor amendment, the Commission `may ... decide, under the procedure laid down in Article 15, not to apply the Article 6 procedure'.

(10) - In any event, it is worth pointing out that Regulation No 535/97 did not introduce mere coexistence of national rules alongside the Community rules. Protection on a national basis is granted only in the context of the procedure leading either to registration of a name, or to amendment of the product specification. Furthermore, it is clear that this is intended to avoid any lacuna in the legal protection for the name at a time when the procedure in question has not yet been completed. It should therefore not be forgotten, in the light of Regulation No 535/97, that the protection granted by the national legislation, which is justified only when an application for registration or amendment of the product specification has been made, is purely provisional.

(11) - Emphasis added.

(12) - Protection will also have to be refused, on the basis of Article 13, when, even if the expression considered is not generic, there is no element of misuse, imitation or evocation, it is not misleading and it is not, in any event, liable to mislead the public as to the true origin of the products. However, that hypothesis seems to be rather theoretical, since, in my opinion, the use of a part of a registered name falls within the scope of one of the situations envisaged by Article 13.