OPINION OF ADVOCATE GENERAL

HOGAN

delivered on 29 July 2019 ( 1 )

Case C‑432/18

Consorzio Tutela Aceto Balsamico di Modena

v

BALEMA GmbH

(Request for a preliminary ruling from the Bundesgerichtshof (Federal Court of Justice, Germany))

(Reference for a preliminary ruling — Agriculture — Council Regulation (EC) No 510/2006 — Regulation (EC) No 1151/2012 — Protection of geographical indications and designations of origins — Article 13(1) — Commission Regulation (EC) No 583/2009 — Registration of the name ‘Aceto Balsamico di Modena (PGI)’ — Protection of components of that indication)

I. Introduction

1. Balsam is an aromatic and oily substance which flows as a sap from various plants. It has for millennia been used as a base for medicines, ointments and fragrances. The use of balsam for these purposes is well established in European tradition and culture. There are several references to the use of balsam (or balm) for healing purposes in both the Bible and the plays of Shakespeare alike and, of course, in Wagner’s final opera, Parsifal, we learn that the suffering and intense pain of the stricken king Amfortas can only be eased by the administration to his otherwise incurable wound of a phial of balsam obtained from Arabia.

2. It is thus that the word ‘balsam’ (and cognate words such as ‘balm’) has historically entered our contemporary understanding. Nowadays, of course, the word ‘balsam’ is often associated with the very well-known product, ‘Aceto Balsamico di Modena’. This is a very dark, concentrated and flavoured vinegar which is made from seasoned (and partially fermented) grapes which age for several years in a series of wooden barrels. ( 2 ) As it happens, the product itself does not contain balsam, but the Italian word ‘balsamico’ means ‘balsam-like’. The use of the adjective ‘balsamico’ to describe the vinegar (‘aceto’) is thus used in the sense of highlighting the curative or healing and generally balsam-like qualities which the product was originally thought to possess.

3. All of this raises the issue of whether the word ‘balsamico’ is entitled to protection as a geographical indication in its own right. This is the essential question which arises in the present request for a preliminary ruling, which was lodged by the Bundesgerichtshof (Federal Court of Justice, Germany) at the Registry of the Court on 2 July 2018 and which concerns the interpretation of Article 1 of and Annex I to Regulation No 583/2009. It was this particular regulation which entered the name ‘Aceto Balsamico di Modena (PGI)’ in the register of protected designations of origin and protected geographical indications.

4. By its question, the referring court seeks to ascertain whether the protection afforded by the registration of the entire name ‘Aceto Balsamico di Modena (PGI)’ extends also to the use of individual non-geographical components ( 3 ) of that name, namely the terms ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’. Before examining these questions, it is necessary first to set out the relevant legal provisions.

II. Legal context

5. Regulation No 583/2009 was adopted on the basis 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. ( 4 ) Regulation No 510/2006 was repealed from 3 January 2013 by Article 58(1) of Regulation (EU) No 1151/2012. ( 5 ) In accordance with Article 58(2) of Regulation No 1151/2012, references inter alia to the repealed Regulation No 510/2006 shall be construed as references to Regulation No 1151/2012. ( 6 )

A. Regulation No 1151/2012

6. Article 3(6) of Regulation No 1151/2012 states that ‘generic terms ’‘means the names of products which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union’.

7. Article 5(2) of Regulation No 1151/2012 provides that: ‘For the purpose of this Regulation, “geographical indication” is a name which identifies a product: (a) originating in a specific place, region or country; (b) whose given quality, reputation or other characteristic is essentially attributable to its geographical origin; and (c) at least one of the production steps of which take place in the defined geographical area.’

8. Article 6(1) of Regulation No 1151/2012 states: ‘Generic terms shall not be registered as protected designations of origin or protected geographical indications.’

9. Article 13 of Regulation No 1151/2012 entitled ‘Protection’ states: ‘1. 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 where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products or services 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, including when those products are used as an ingredient; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used 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. Where a protected designation of origin or a protected geographical indication contains within it the name of a product which is considered to be generic, the use of that generic name shall not be considered to be contrary to points (a) or (b) of the first subparagraph. 2. Protected designations of origin and protected geographical indications shall not become generic. …’

10. Article 41 of Regulation No 1151/2012 entitled ‘Generic terms’ provides: ‘1. Without prejudice to Article 13, this Regulation shall not affect the use of terms that are generic in the Union, even if the generic term is part of a name that is protected under a quality scheme. 2. To establish whether or not a term has become generic, account shall be taken of all relevant factors, in particular: (a) the existing situation in areas of consumption; (b) the relevant national or Union legal acts. 3. In order to fully protect the rights of interested parties, the Commission shall be empowered to adopt delegated acts, in accordance with Article 56, laying down additional rules for determining the generic status of terms referred to in paragraph 1 of this Article.’

B. Regulation No 583/2009

11. Recitals 2 to 5, 7, 8 and 10 of Regulation No 583/2009 provide: ‘(2) Germany, Greece and France submitted objections to the registration … (3) Germany’s objection referred in particular to the concern that the registration of “Aceto Balsamico di Modena” as a protected geographical indication would adversely affect other products that have been placed lawfully on the market for at least 5 years and sold as Balsamessig/Aceto balsamico, as well as to the alleged generic character of these terms. … (4) France’s objection concerned the fact that “Aceto Balsamico di Modena” does not have its own reputation that is distinct from that of “Aceto balsamico tradizionale di Modena”, which has already been registered as a protected designation of origin under Council Regulation (EC) No 813/2000. France claims that consumers could be misled as to the nature and origin of the product in question. (5) Greece stressed the importance of balsamic vinegar production in Greece, which is marketed under names such as “balsamico” or “balsamon” and the negative impact that registration of the name “Aceto Balsamico di Modena” would have on these products, which have been placed lawfully on the market for at least 5 years. Greece also maintains that the terms “aceto balsamico”, “balsamic”, etc. are generic. … (7) Given that no agreement was reached between France, Germany, Greece and Italy within the designated timeframe, the Commission must adopt a decision in accordance with the procedure outlined in Article 15(2) of Regulation (EC) No 510/2006. (8) The Commission has requested the opinion of the scientific committee for designations of origin, geographical indications and certificates of specific character established under Decision 93/53/EC as to whether the conditions for registration were met. The committee stated in its unanimous opinion submitted on 6 March 2006 that the name “Aceto Balsamico di Modena” has an undeniable reputation on the national and international market, as demonstrated by its frequent use in numerous recipes in many Member States, and the many references to it on the internet, in the press and other media. “Aceto Balsamico di Modena” therefore meets the inherent condition for the product having a specific reputation linked to that name. The committee noted the fact that these products have co-existed on the market for hundreds of years. It also noted that “Aceto Balsamico di Modena” and “Aceto balsamico tradizionale di Modena” are different as regards their characteristics, customer base, usage, method of distribution, presentation and price, thereby ensuring the fair treatment of the producers in question and not misleading consumers. The Commission fully concurs with these points. … (10) It appears that Germany and Greece did not refer to the entire name, i.e. “Aceto Balsamico di Modena” in their objections regarding the generic nature of the name proposed for registration, but only to some elements of it, namely the words “aceto”, “balsamico” and “aceto balsamico”, or to translations thereof. However, protection is granted to the term “Aceto Balsamico di Modena” as a whole. Individual non-geographical components of that term may be used, even jointly and also in translation, throughout the Community, provided the principles and rules applicable in the Community’s legal order are respected.’

12. Article 1 of Regulation No 583/2009 provides: ‘The name contained in Annex I to this Regulation shall be entered in the register.’

13. Annex I of Regulation No 583/2009 refers to ‘Aceto Balsamico di Modena (PGI)’.

III. The dispute in the main proceedings and the question referred for a preliminary ruling

14. BALEMA GmbH (‘BALEMA’) produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

15. It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfil the product specifications contained in Annex II of that regulation.

16. Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA in turn brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

17. In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

18. The case was appealed to the referring court.

19. The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

20. The Bundesgerichtshof (Federal Court of Justice) notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Bundesgerichtshof (Federal Court of Justice) also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

21. The Bundesgerichtshof (Federal Court of Justice) considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favour of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’ pursuant to Council Regulation (EC) No 813/2000 of 17 April 2000 supplementing the Annex to Commission Regulation (EC) No 1107/96 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Regulation (EEC) No 2081/92. ( 7 ) Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 ( 8 ) (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

22. In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling: ‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

IV. Procedure before the Court

23. Written observations were submitted by the Consorzio, the Italian, Greek, and Spanish Governments and the Commission. The Consorzio, BALEMA, the German, Greek, Spanish and Italian Governments and the Commission presented oral argument at the hearing on 23 May 2019.

V. Analysis

A. Preliminary remarks

24. It may be observed at the outset that part of the difficulty in this — and, indeed, other similar — cases stems from the somewhat promiscuous use of the single expression ‘generic terms’ in two different senses. As I have just noted, the expression ‘generic terms’ is defined by Article 3(6) of Regulation No 1151/2012 as meaning the names of products ‘which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union’. But the expression has also been used by courts, judges, lawyers and commentators alike to refer simply to common or usual words which, precisely because of their generic quality, do not qualify for registration as PGIs/PDOs. ( 9 ) As it is necessary to keep these concepts separate, I propose to use the expression ‘generic terms’ in the special sense by which it was defined in Article 3(6) of Regulation No 1151/2012, but otherwise simply to use the term ‘common words’ to describe words or phrases which in other contexts could — or, perhaps, even would — be described as generic in character.

25. Article 13(1)(a) to (d) of Regulation No 1151/2012 sets out a graduated list of prohibited conduct in relation to names registered under that regulation. ( 10 ) Points (a) to (d) of Article 13(1) of Regulation No 1151/2012 refer to various situations in which the marketing of a product is accompanied by an explicit or implicit reference to a geographic indication or denomination in circumstances liable to mislead the public as to the origin of the product or, at the very least, to set in train in the mind of the public an association of ideas regarding that origin, or to enable the trader to take unfair advantage of the reputation of the geographical indication or denomination concerned. ( 11 )

26. In the judgment of 7 June 2018, Scotch Whisky Association (C‑44/17, EU:C:2018:415, paragraph 29), the Court held that the word ‘use’ in Article 16(a) of Regulation No 110/2008 in relation to ‘any direct or indirect commercial use in respect of products not covered by the registration’ ( 12 )‘requires, by definition, that the sign at issue make use of the protected geographical indication itself, in the form in which that indication was registered or, at least, in a form with such close links to it, in visual and/or phonetic terms, that the sign at issue clearly cannot be dissociated from it’. At paragraph 44 of that judgment, the Court stated that the notion of ‘evocation’ ( 13 )‘covers a situation in which the term used to designate a product incorporates part of a protected geographical indication, so that when the consumer is confronted with the name of the product in question, the image triggered in his mind is that of the product whose indication is protected’. ( 14 )

27. Article 13(1), second subparagraph, of Regulation No 1151/2012 provides, however, that, when a name ( 15 ) registered in the register of protected designations of origin (‘PDO’) and protected geographical indications (‘PGI’), contains a generic element, the use of that generic element does not infringe the protection of the aforementioned registered name pursuant to Article 13(1)(a) and (b) of that regulation. It is thus clear from the very wording of Article 13(1), second subparagraph, of Regulation No 1151/2012 itself that a compound name registered in the register of PDOs and PGIs may itself contain generic or otherwise unprotected elements.

28. Thus, where a PDO or a PGI is made up of several elements/names, one or more of which is the name of a product which is considered generic, the use by a third party of the generic element/name does not, in principle, infringe the protection granted by Article 13(1)(a) and (b) ( 16 ) of Regulation No 1151/2012 ( 17 ) against any direct or indirect commercial use of a registered name and any misuse, imitation or evocation of a registered name respectively. ( 18 ) This point may be illustrated by a very straightforward example. Prosciutto di Parma (Parma ham) has been entered on the PDO register, ( 19 ) but it could not be suggested, for example, that the word ‘prosciutto’/‘ham’ cannot be used by other producers and suppliers.

29. This important principle was confirmed by the order of 6 October 2015, Schutzgemeinschaft Milch und Milcherzeugnisse v Commission (C‑517/14 P, EU:C:2015:700), in which the Court stated that given that the Commission had determined, in Article 1 of Commission Regulation (EU) No 1121/2010 of 2 December 2010 entering a designation in the register of protected designations of origin and protected geographical indications [Edam Holland (PGI)] ( 20 ) relating to the registration of the name ‘Edam Holland’, that the name ‘Edam’ constitutes a generic designation, that word could — the registration of the PGI ‘Edam Holland’ notwithstanding — continue to be used within the territory of the European Union, provided that the principles and rules applicable in its legal order were respected. The Court thus found that the General Court had not erred in law in finding, inter alia, that Regulation No 1121/2010 provides that the name ‘Edam’ may continue to be used for the marketing of cheeses. ( 21 )

30. Given the very broad scope of protection granted by Article 13(1)(a) and (b) of Regulation No 1151/2012, ( 22 ) so far as the present case is concerned, it is imperative to ascertain, prior to any determination of infringement of those provisions, whether a compound name registered in the register of PDOs and PGIs contains generic — and thus unprotected — elements.

B. The concept of ‘generic terms’ pursuant to Regulation No 1151/2012 and the case-law of the Court

31. As I have already indicated, the definition of ‘generic terms’ contained in Article 3(6) of Regulation No 1151/2012 is, in my view, very specific and limited in scope. It ‘means the names of products which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union’. ( 23 ) The definition thus refers to terms which over time have lost their geographical connotation. In its judgment of 2 July 2009, Bavaria and Bavaria Italia (C‑343/07, EU:C:2009:415, paragraph 107), the Court stated that ‘as regards a PGI, a name becomes generic only if the direct link between, on the one hand, the geographical origin of the product and, on the other hand, a specific quality of that product, its reputation or another characteristic of the product, attributable to that origin, has disappeared, and that the name does no more than describe a style or type of product’.

32. As I have already indicated, part of the difficulty in the present — and, indeed, similar — cases arises from the particular and limited manner in which the term ‘generic’ has been defined by Regulation No 1151/2012. It is nevertheless clear that, in addition to ‘generic terms’ in the strict sense of the definition contained in Article 3(6) of Regulation No 1151/2012, the use of common names or usual terms which have no current geographical connotation — and which are often also described as generic terms in a slightly different sense of that term — do not infringe the protection of a registered name provided under Article 13(1)(a) and (b) of Regulation No 1151/2012.

33. In that regard, it must be noted that at paragraph 80 of its judgment of 16 March 1999, Denmark and Others v Commission (C‑289/96, C‑293/96 and C‑299/96, EU:C:1999:141), the Court considered that the terms ‘name that has become generic’ — contained in a provision equivalent to Article 41 of Regulation No 1151/2012 concerning the use of generic terms — is also applicable to names which have always been generic.

34. Moreover, in its judgment of 9 June 1998, Chiciak and Fol (C‑129/97 and C‑130/97, EU:C:1998:274, paragraph 37), the Court found that the protection afforded by a provision equivalent to Article 13(1) of Regulation No 1151/2012 covers not only the compound designation as a whole, but also each of its constituent parts, provided they are not generic or common terms. ( 24 )

35. The German, Greek, and Spanish Governments and the Commission consider that ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’ are generic and/or common terms. For example, it was argued before this Court that the term ‘Balsamico’ is derived from the Latin word ‘balsamun’ or the Greek word ‘βάλσαμον’, ( 25 ) is used in Italian, Spanish and Portuguese and refers, inter alia, to a calming preparation used for medicinal purposes.

36. In assessing whether a term is generic in the special context of the definition contained in Article 3(6) of Regulation No 1151/2012, or whether it is a common term (and thus generic in the broader sense I have just described), what is decisive, in my view, is not necessarily whether a term has a particular meaning in a given language ( 26 ) but rather whether it lacks a current geographical connotation.

37. In that regard, it must be noted that despite the fact that the word ‘feta’ means ‘slice’ in Italian ( 27 ) and would thus at least prima facie appear to be a common term, the Court found in its judgment of 25 October 2005, Germany and Denmark v Commission (C‑465/02 and C‑466/02, EU:C:2005:636, paragraphs 88 and 94) that the name ‘feta’ as a PDO for cheese was not generic. ( 28 ) The Court found that the Commission was entitled to conclude that ‘feta’ was a designation of origin in respect of cheese produced in Greece. That decision must, however, be understood by reference to the specific and particular findings of fact made in that case.

38. In that case, the Federal Republic of Germany and the Kingdom of Denmark applied for annulment of Commission Regulation (EC) No 1829/2002 of 14 October 2002 amending the Annex to Regulation (EC) No 1107/96 with regard to the name ‘Feta’ ( 29 ) claiming that it was inter alia, generic, in the sense of Article 3(1) of Regulation No 2081/92 i.e., the predecessor of the present Article 3(6) and Article 41(2) of Regulation No 1151/2012. In assessing whether the term ‘feta’ was generic, the Court took into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law. ( 30 )

39. As the Court observed at paragraphs 86 to 90 of its judgment: ‘86 The information provided to the Court indicates that the majority of consumers in Greece consider that the name “feta” carries a geographical and not a generic connotation. In Denmark, by contrast, the majority of consumers believe that the name is generic. The Court does not have any conclusive evidence regarding the other Member States. 87 The evidence adduced to the Court also shows that, in Member States other than Greece, feta is commonly marketed with labels referring to Greek cultural traditions and civilisation. It is legitimate to infer therefrom that consumers in those Member States perceive feta as a cheese associated with the Hellenic Republic, even if in reality it has been produced in another Member State. 88 Those various factors relating to the consumption of feta in the Member States tend to indicate that the name “feta” is not generic in nature. 89 As to the German Government’s argument referring to the second sentence of the 20th recital of the contested regulation, it follows from paragraph 87 of this judgment that it is not incorrect to state, with respect to consumers in Member States other than the Hellenic Republic, that “the link between the name ‘feta’ and Greece is thus deliberately suggested and sought as part of a sales strategy that capitalises on the reputation of the original product, and this creates a real risk of consumer confusion”. 90 The argument put forward by the German Government maintaining the contrary is, therefore, unfounded.’ ( 31 )

40. In effect, therefore, that case turned on the fact that, as found by the Court, for the vast majority of European consumers, the word ‘feta’ was indelibly associated with the particular cheese produced in Greece. Indeed, save for Italian speakers, the term had no other meaning for those consumers. It followed, accordingly, that the Commission was entitled to conclude that the word ‘feta’ was not a generic term for the purposes of Article 3(1) of Regulation No 2081/92 as it had a current geographical connotation.

41. If the matter were one of purely personal judgment, I think that I would find myself arriving at the opposite conclusion so far as the present case is concerned. ‘Aceto’ is obviously a common Italian word and while the word ‘balsamico’ is certainly closely associated in the minds of many consumers with the product produced by the Consorzio, the basic root word(s) ‘balsam’ and ‘balm’ are, in my view, just too common and well established words to accommodate themselves individually for protection as a PGI. Nor, in my view, can it be said that these words have a current geographical connotation so that, on this basis, these words represent ‘generic terms’ for the purposes of Article 3(6) of Regulation 1151/2012.

42. The test, nevertheless, is ultimately the manner in which these words would be perceived by the ‘average consumer who is reasonably well informed and reasonably observant and circumspect’. ( 32 ) This would be a matter ultimately for the national court to verify and assess, assisted perhaps by appropriate consumer surveys and the like. ( 33 )

43. Absent such findings by the national court, in these circumstances, I believe that the Court is simply not in a position itself to make a judgement as to whether the words ‘aceto’ and ‘balsamico’ are common words in the sense I have described or whether the words are also ‘generic terms’ in the special sense of Article 3(6) of Regulation No 1151/2012. Despite this reservation, I nonetheless consider that this Court can give a definitive ruling on this matter if the matter is approached from the slightly different standpoint of an analysis of the provisions of Regulation No 583/2009. In this respect, I have found its recitals to be particularly instructive. It is to this issue to which I now propose to turn.

C. Interpretation of Regulation No 583/2009

44. In accordance with Article 1 of and Annex I to Regulation No 583/2009, the compound name ‘Aceto Balsamico di Modena (PGI)’ was entered in the register. No limitation or qualification in respect of the scope of protection of that compound name is contained in Article 1 of or Annex I to that regulation.

45. It is clear however from recitals 2, 3, 5 and 7 of Regulation No 583/2009 that Germany, Greece ( 34 ) and France submitted objections to the registration of the name ‘Aceto Balsamico di Modena’. It would appear in particular that Germany and Greece considered that the terms inter alia ‘Aceto balsamico’ were generic in character. (It is to be inferred from the context that the phrase ‘generic terms’ was used synonymously in the sense of common or usual word.)

46. Moreover, recital 10 of Regulation No 583/2009 states, inter alia, that ‘protection is granted to the term “Aceto Balsamico di Modena”as a whole. Individual non-geographical components of that term may be used, even jointly and also in translation, throughout the Community, provided the principles and rules applicable in the Community’s legal order are respected.’ ( 35 )

47. Despite the contents of the recitals in question and the obvious controversy that surrounded the registration of the PGI ‘Aceto Balsamico di Modena’, it must be recalled that the Commission did not specifically determine in Article 1 of or Annex I to Regulation No 583/2009 whether any of the terms ‘Aceto’, ‘Balsamico’ or ‘Aceto Balsamico’ were generic designations (either in the special sense of the regulation or in the alternative and wider sense of that term by reason of the fact that they were simply common words) or non-geographical components, and could thus, notwithstanding the registration of the PGI at issue, continue to be used within the territory of the European Union in accordance with Article 13(1), second subparagraph, of Regulation No 1151/2012.

48. This approach contrasts with the situation which prevailed in relation for example to Regulation No 1121/2010 in which not only recital 8 of the regulation in question but also its operative part clearly indicated that the name ‘Edam’ was generic. ( 36 )

49. It must however be noted that in its judgment of 9 June 1998, Chiciak and Fol (C‑129/97 and C‑130/97, EU:C:1998:274, paragraph 39), the Court held as regards the use of compound terms in a designation of origin, ( 37 ) that the fact that there was no footnote in the annex to the regulation registering the designation in question specifying that registration was not sought for one of the parts of that designation ( 38 ) did not necessarily mean that each of its parts was protected. ( 39 ) By contrast in its judgment of 26 February 2008, Commission v Germany (C‑132/05, EU:C:2008:117, paragraph 31), the Court rejected the argument that a PDO enjoys protection only in the exact form in which it is registered. ( 40 )

50. In summary, no conclusion can be drawn from the fact that Article 1 of and Annex I to Regulation No 583/2009 do not specifically indicate whether any of the terms ‘Aceto’, ‘Balsamico’ or ‘Aceto Balsamico’ are generic designations (whether in the special sense of Article 3(6) of the regulation or by reason of the fact that they are common words) or non-geographical components.

51. Given that it is unclear from the wording Article 1 of and Annex I to Regulation No 583/2009, interpreted in the light of the above case-law, whether any of the terms ‘Aceto’, ‘Balsamico’ or ‘Aceto Balsamico’ are generic designations (and, again, whether in the special sense of Article 3(6) of the regulation or by reason of the fact that they are common words) or non-geographical components, I consider that those provisions must be interpreted in the light of the recitals of that regulation. It is settled case-law that the operative part of a European Union act is indissociably linked to the statement of reasons for it, so that, when it has to be interpreted, account must be taken of the reasons which led to its adoption. ( 41 )

52. In that regard, recitals 2 to 5, 7, 8 and 10 of Regulation No 583/2009 clearly and unequivocally indicate that the European legislature (in this instance, the Commission) considered, on the basis of express objections raised by Germany, Greece and France that the terms ‘Aceto’, ‘Aceto Balsamico’ and ‘Balsamico’ were generic designations or non-geographical components and that protection was only to be afforded to the entire name ‘Aceto Balsamico di Modena’ rather than individual non-geographical components thereof.

53. In recital 8 of Regulation No 583/2009, the reputation of ‘Aceto Balsamico di Modena’ is stressed and in recital 10 it is indicated that despite the objections raised by Germany, Greece and France to the registration of the terms ‘Aceto’, ‘Aceto Balsamico’ and ‘Balsamico’, no objection was raised in relation to the entire name ‘Aceto Balsamico di Modena’. As previously indicated, recital 10 states that ‘protection is granted to the term “Aceto Balsamico di Modena”as a whole’ ( 42 ) and that individual non-geographical components of that term may, in principle, be used.

54. I consider, accordingly, that it is clear in particular from recital 10 of Regulation No 583/2009 that the European legislature considered that terms ‘Aceto’, ‘Aceto Balsamico’ and ‘Balsamico’ are generic (in both senses of that term) or non-geographical components which are unprotected and which could continue to be used provided that the principles and rules applicable in the European Union’s legal order are respected.

55. An interpretation of Regulation No 583/2009 which would limit the scope of protection afforded by it to the entire name ‘Aceto Balsamico di Modena’ rather than extending protection to its individual non-geographical components is clearly supported by the judgments of the Court of 9 December 1981, Commission v Italy (193/80, EU:C:1981:298), and of 15 October 1985, Commission v Italy (281/83, EU:C:1985:407). In those cases, the Court noted that the term ‘Aceto’ is the Italian word for vinegar and held that it is a generic term. As these were free movement of goods cases, the Court was obviously using the words ‘generic term’ in the sense of saying that the word ‘aceto’ was simply a common Italian word for vinegar.

56. Despite the absence of any indication in Article 1 of or Annex I to Regulation No 583/2009 specifically limiting the protection granted to the term ‘Aceto’, that common term cannot, in the light of the above case-law, be protected by that regulation. ( 43 )

57. Moreover, in my view, the registration of the name ‘Aceto balsamico tradizionale di Modena (PDO)’ pursuant to Regulation No 813/2000, which is all but identical to the PGI ‘Aceto Balsamico di Modena’, save for the additional word ‘tradizionale’ ( 44 ) and the capitalisation of the ‘b’ in ‘balsamico’ clearly argues, in my view, in favour of a finding that only the indication ‘Aceto Balsamico di Modena’ as a whole is protected and that the terms ‘Aceto’, ‘balsamico’ and ‘Aceto balsamico’ are simply common words. Such an approach is unequivocally supported by recitals 8 and 9 of Regulation No 583/2009.

58. I also consider that the registration of the designation ‘Aceto balsamico tradizionale di Reggio Emilia (PDO)’ pursuant to Regulation No 813/2000 also tends to indicate that the terms ‘Aceto’, ‘balsamico’ and ‘Aceto balsamico’ are common words.

59. In contrast, given the obvious geographic connotation attached to the word ‘Modena’, ( 45 ) I consider that the use of that term or the terms ‘di Modena’ in relation to vinegar or indeed other condiments could evoke, pursuant to Article 13(1)(b) of Regulation No 1151/2012, not only ‘Aceto balsamico di Modena’ but also ‘Aceto balsamico tradizionale di Modena’.

60. I therefore consider that the protection of the entire name ‘Aceto Balsamico di Modena’ under Regulation No 583/2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’. ( 46 ) Those individual common words or non-geographical components may be used provided that the principles and rules applicable in the European Union order are respected.

VI. Conclusion

61. In view of all the foregoing considerations, I consider that the Court should answer the question referred by the Bundesgerichtshof (Federal Court of Justice, Germany) as follows: The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.

( 1 ) Original language: English.

( 2 ) See, Annex II of Commission Regulation (EC) No 583/2009 of 3 July 2009 entering a name in the register of protected designations of origin and protected geographical indications [Aceto Balsamico di Modena (PGI)], OJ 2009 L 175, p. 7.

( 3 ) No question is raised concerning the term ‘Modena’.

( 4 ) OJ 2006 L 93, p. 12.

( 5 ) Regulation 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).

( 6 ) For the purposes of the present proceedings, the relevant provisions of Regulation No 510/2006 are essentially equivalent to those of Regulation No 1151/2012. I shall therefore refer to Regulation No 1151/2012 in these proceedings for the sake of convenience.

( 7 ) OJ 2000 L 100, p. 5.

( 8 ) 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).

( 9 ) As they lack any current geographical connotation.

( 10 ) See judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (C‑614/17, EU:C:2019:344, paragraph 25).

( 11 ) See, by analogy, judgment of 14 July 2011, Bureau national interprofessionnel du Cognac (C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 46), which concerned Article 16 of Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 (OJ 2008 L 39, p. 16) which is essentially equivalent to Article 13(1)(a) to (d) of Regulation No 1151/2012.

( 12 ) See by analogy, Article 13(1)(a) of Regulation No 1151/2012.

( 13 ) See by analogy, Article 13(b) of Regulation No 1151/2012.

( 14 ) Emphasis added. The Court however noted at paragraphs 45 and 46 of that judgment that the partial incorporation of a protected geographical indication in a sign is not an essential condition in order to establish an ‘evocation’. ‘The decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected, a matter which it falls to the national court to assess, taking into account, as the case may be, the partial incorporation of a protected geographical indication in the disputed designation, any phonetic and/or visual similarity, or any conceptual proximity, between the designation and the indication.’ Judgment of 7 June 2018, Scotch Whisky Association (C‑44/17, EU:C:2018:415, paragraph 51).

( 15 ) I consider that ‘name’, ‘element’ or ‘term’ may be used interchangeably in the present context.

( 16 ) The Court stated in its judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (C‑614/17, EU:C:2019:344, paragraph 24), ‘that [Article 13(1)(b) of Regulation No 1151/2012] requires protection against “any” evocation, even if the protected name is accompanied by an expression such as “style”, “type”, “method”, “as produced in” or “imitation”, on the packaging of the product concerned’. In addition, there may be an ‘evocation’ even if the true origin of the product is indicated. Judgment of 7 June 2018, Scotch Whisky Association (C‑44/17, EU:C:2018:415, paragraph 57).

( 17 ) Article 13(c) and (d) of Regulation No 1151/2012, which are not subject to the caveat contained in Article 13(1), second subparagraph, of Regulation No 1151/2012 in respect of generic names, refer to situations where the use of false or misleading indications as to the provenance of a product which does not meet the specifications set for that indication is such as to give rise to a false impression as to the origin of that product or to practices liable to mislead the consumer as to its true origin.

( 18 ) See by analogy, judgment of 12 September 2007, Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi(GRANA BIRAGHI) (T‑291/03, EU:T:2007:255, paragraph 58). In accordance with the judgment of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola (C‑87/97, EU:C:1999:115, paragraph 25), the term ‘evocation’ contained in Article 13(1)(b) of Regulation No 1151/2012 covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected. I consider that, in principle, the use of a name of a product which is considered generic and which is part of a PDO or PGI may not on its own constitute an evocation pursuant to Article 13(1)(b) of Regulation No 1151/2012. It must be noted that the use of such a generic name together with other terms, images etc. may in certain circumstances however, in my view, constitute such an evocation. See by analogy, the judgment of 7 June 2018, Scotch Whisky Association (C‑44/17, EU:C:2018:415, paragraph 46). I therefore agree with the Consorzio that the question, examined in isolation, of whether a term in a PDO or PGI is generic may not be sufficient to resolve a question of whether there is an infringement pursuant to Article 13(1)(b) of Regulation No 1151/2012. In that regard, the Italian Government has asked the Court to rule not only on the question of whether the PGI ‘Aceto Balsamico di Modena’ covers the use of individual non-geographic elements of that indication but also on the conditions in accordance with which it is permitted and not permitted to use the terms ‘Aceto Balsamico’ or ‘Balsamico’ for the marketing of vinegar based condiments. I consider that such a question is beyond the scope of the current proceedings before this Court as it requires a knowledge of facts and circumstances that have not even been alluded to in the current proceedings. Such issues may, however be relevant in the main proceedings before the referring court. I would note however that in its recent judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (C‑614/17, EU:C:2019:344), the Court provides considerable insight into the legal rules applicable under Article 13(1)(b) of Regulation No 1151/2012.

( 19 ) Commission Implementing Regulation (EU) No 1208/2013 of 25 November 2013 approving minor amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Prosciutto di Parma (PDO)), OJ 2013 L 317, p. 8.

( 20 ) OJ 2010 L 317, p. 14. See also recital 8 of that regulation.

( 21 ) See also Commission Regulation (EU) No 1122/2010 of 2 December 2010 entering a designation in the register of protected designations of origin and protected geographical indications [Gouda Holland (PGI)], OJ 2010 L 317, p. 22, and order of 6 October 2015, Schutzgemeinschaft Milch und Milcherzeugnisse v Commission (C‑519/14 P, EU:C:2015:702). In that order, the Court stated that the Commission had determined, in Article 1 of Regulation No 1122/2010 relating to the registration of the name ‘Gouda Holland’ that since the name ‘Gouda’ constitutes a generic designation it could, notwithstanding the registration of the PGI ‘Gouda Holland’, continue to be used within the territory of the European Union, provided that the principles and rules applicable in its legal order were respected. The Court thus found that the General Court had not erred in law in finding inter alia that Regulation No 1122/2010 provides that the name ‘Gouda’ may continue to be used for the marketing of cheeses.

( 22 ) On the broad scope of protection afforded by Article 13(1)(b) of Regulation No 1151/2012, see the recent judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (C‑614/17, EU:C:2019:344).

( 23 ) Emphasis added.

( 24 ) See also judgment of 10 September 2009, Severi (C‑446/07, EU:C:2009:530, paragraph 50).

( 25 ) The Greek Government indicated that one of the meanings of the Greek word ‘βάλσαμον’ is ‘something which gives pleasure or relieves pain or sadness’.

( 26 ) And is thus allegedly by implication a term lacking any geographical connotation. This is not to suggest that evidence that a term has a particular meaning is irrelevant. It may not however be sufficient in itself to prove that a term in a registered PGI/DOP is generic.

( 27 ) The term ‘feta’ itself, unlike terms such as ‘Bayerisches Bier’ (judgment of 2 July 2009, Bavaria and Bavaria Italia (C‑343/07, EU:C:2009:415) and ‘Parmesan’ (judgment of 26 February 2008, Commission v Germany, C‑132/05, EU:C:2008:117), does not per se refer to a particular geographical location. It was found however, on the basis of concrete factual evidence, to have such a geographical connotation. In its judgment of 12 September 2007, Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi (GRANA BIRAGHI) (T‑291/03, EU:T:2007:255, paragraph 81), the General Court held that ‘in claiming that the term “grana” does not designate a geographical area as such, Biraghi essentially seeks to establish that the name “grana” could not in any case have the protection granted by Regulation No 2081/92 given that it does not satisfy the definition of designation of origin given in Article 2 of that regulation. It is irrelevant whether the name ‘grana’ is based on the fact that the cheese which it designates has a granular structure or on the fact that it was originally produced in the Valle Grana, since, under Article 2(3) of Regulation No 2081/92, a PDO may also be constituted by a traditional non-geographical name designating a foodstuff originating in a region or specific place which presents homogenous natural factors which distinguish it from the areas adjoining it … In that regard, it is not disputed that grana cheese originates in the region of the plain of the Po. On that basis, it meets the conditions provided for in Article 2(3) of Regulation No 2081/92’. At paragraph 41 of its judgment of 14 December 2017, Consejo Regulador de la Denominación de Origen Torta del Casar v EUIPO — Consejo Regulador Queso de La Serena (QUESO Y TORTA DE LA SERENA) (T‑828/16, not published, EU:T:2017:918), the General Court restated that it was not sufficient to merely find that a term forming part of PDO does not designate a geographical zone per se in order to exclude the protection granted by the Regulation No 510/2006. Thus the General Court found, following an analysis of the detailed evidence advanced, that it could not be excluded that the term ‘Torta’ which formed part of the PDO ‘Torta del Casar’ was not a generic term and was itself protected. This was despite the fact that the term ‘Torta’ referred to the shape of the product (cheese) in question and, I would note, means ‘cake’ in several languages.

( 28 ) See also judgment of 14 December 2017, Consejo Regulador Torta del Casar v EUIPO — Consejo Regulador Queso de La Serena(QUESO Y TORTA DE LA SERENA) (T‑828/16, not published, EU:T:2017:918)

( 29 ) OJ 2002 L 277, p. 10.

( 30 ) Judgment of 25 October 2005, Germany and Denmark v Commission (C‑465/02 and C‑466/02, EU:C:2005:636, paragraphs 76 to 99). On the question of whether the term ‘Parmesan’ had become a generic name, the use of which would not amount to an unlawful evocation of the PDO ‘Parmigiano Reggiano’, the Court stated in its judgment of 26 February 2008, Commission v Germany (C‑132/05, EU:C:2008:117, paragraph 54), that the Federal Republic of Germany had restricted itself to providing quotations from dictionaries and specialist literature which did not provide any comprehensive view of how the word ‘Parmesan’ was perceived by consumers in Germany and other Member States. Moreover, according to the Court, that Member State had failed even to give any figures as to the production or consumption of the cheese marketed under the name ‘Parmesan’ in Germany or in other Member States.

( 31 ) Judgment of 25 October 2005, Germany and Denmark v Commission (C‑465/02 and C‑466/02, EU:C:2005:636, paragraphs 86 to 90.)

( 32 ) See, by analogy, the judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (C‑614/17, EU:C:2019:344, paragraph 50).

( 33 ) For a comprehensive overview of the evidence to be examined by a national court see judgment of 12 September 2007, Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi (GRANA BIRAGHI), T‑291/03, EU:T:2007:255, paragraphs 65 to 67).

( 34 ) Germany and Greece noted that other products have been lawfully placed on the market for at least 5 years under names such as ‘Balsamessig’, ‘Aceto Balsamico’, ‘balsamico’ and ‘balsamon’. The Spanish Government indicated in its observations that the term ‘balsamic vinegar’ is defined in Article 3 of Royal Decree 661/2012 of 13 April, establishing the rules on quality standards governing the production and marketing of vinegars (Real Decreto 661/2012, de 13 de abril, por el que se establece la norma de calidad para la elaboración y comercialización de los vinagres). Moreover, according to that government the Royal Decree in question was notified in accordance with Directive 98/34/EC of the European Parliament and of the Council of 22 June 1998 laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services (OJ 1998 L 204, p. 37). It therefore claims that for many years, products in conformity with the Royal Decree have been sold as balsamic vinegar which are not covered by the PGI ‘Aceto Balsamico di Modena’ or indeed the PDOs ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’.

( 35 ) Emphasis added.

( 36 ) The Italian Government has relied considerably on the fact that the operative part of Regulation No 583/2009 does not specifically indicate that the terms ‘Aceto Balsamico’ or ‘Balsamico’ are generic.

( 37 ) In that case, ‘Époisses de Bourgogne’ in respect of cheese.

( 38 ) Namely the term ‘Époisses’.

( 39 ) I therefore consider that the Italian Government’s reliance on the fact that the terms ‘Edam’ and ‘Gouda’ were explicitly deemed generic in the relevant regulations cannot in itself be decisive.

( 40 ) The Court, at paragraph 29 its judgment of 26 February 2008, Commission v Germany (C‑132/05, EU:C:2008:117), citing its judgment of 9 June 1998, Chiciak and Fol (C‑129/97 and C‑130/97, EU:C:1998:274, paragraph 38), stated that the lack of a declaration that, for certain elements of a designation, the protection conferred by Article 13 was not requested, cannot constitute a sufficient basis for determining the scope of that protection.

( 41 ) Judgment of 29 April 2004, Italy v Commission (C‑298/00 P, EU:C:2004:240, paragraph 97 and the case-law cited). Moreover, the Court has consistently held that, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (see, inter alia, judgments of 23 January 2018, Piotrowski, C‑367/16, EU:C:2018:27, paragraph 40, and of 7 February 2018, American Express, C‑304/16, EU:C:2018:66, paragraph 54). It is also true that, according to the case-law of the Court, the preamble to a European Union act has no binding legal force and cannot be relied on either as a ground for derogating from the actual provisions of the act in question or for interpreting them in a manner clearly contrary to their wording (judgment of 2 April 2009, Tyson Parketthandel (C‑134/08, EU:C:2009:229, paragraph 16). In the present case, however, given the lack of clarity on the matter displayed by Article 1 of and Annex I to Regulation No 583/2009, reliance on the recitals to that regulation far from resulting in any contra legem interpretation serves to elucidate the intent of the European Union legislature.

( 42 ) Emphasis added.

( 43 ) See Articles 3(6), 6(1), 13(1), second subparagraph, and 41 of Regulation No 1151/2012.

( 44 ) The Italian word for ‘traditional’.

( 45 ) Which brings to mind the Italian city of Modena.

( 46 ) At paragraph 70 of the order of 7 July 2011, Acetificio Marcello de Nigris v Commission (T‑351/09, not published, EU:T:2011:339), the General Court stated that recital 10 of Regulation No 583/2009 ensures that protection is conferred on the composite name ‘Aceto Balsamico di Modena’ as a whole. Therefore the individual non-geographical terms of that composite name, even if used jointly, as well as their translation, may be used in all Member States. While this Court is not however bound by that finding by the General Court, I am in full agreement therewith.