Opinion of the Advocate-General



Opinion of the Advocate-General

1. In a situation in which the name of a foodstuff, which is evocative of a place of provenance, has been registered by a group of local producers as a (national) collective trade mark, and an application has also been made for its registration as a (Community) protected designation of origin (‘PDO’) or protected geographical indication (‘PGI’), to what extent may another producer who uses a similar name for a similar foodstuff rely, in defence against an allegation that the labelling of his foodstuff could mislead consumers, on (i) the fact that examination of the application for PDO or PGI status has not yet determined that the name has not become generic and/or (ii) the fact that he has used the name in good faith for a long period?

2. That is the essence of the questions referred to the Court in the present case by the Tribunale Civile di Modena (Civil Court, Modena), in Italy.

Community legislation

3. This reference concerns the interpretation 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, (2) of Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs (3) and of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. (4)

Regulation No 2081/92

4. Regulation No 2081/92 sets out a framework for the protection of registered designations of origin and geographical indications. (5) Under the Regulation, the names of certain agricultural and food products may be protected throughout the Community as PDOs or PGIs where the characteristics of the products in question are linked with their geographical origin. (6)

5. The fifth recital to the Regulation states that the labelling of agricultural products and foodstuffs is subject to the general rules laid down in Directive 79/112 (7) and that, in view of their specific nature, additional special provisions should be adopted for agricultural products and foodstuffs from a specified geographic area. Article 1(2), in defining the scope of the Regulation, expressly states that it applies without prejudice to other specific Community provisions.

6. Article 2 provides that Community protection of designations of origin and of geographical indications is to be obtained in accordance with the Regulation, and defines the conditions which must be fulfilled in order for a name to be categorised as a ‘designation of origin’ or a ‘geographical indication’.

7. To that end, Article 2(2)(a) states that a ‘designation of origin’ means the name of a region, a specific place or a country, used to describe an agricultural product or a foodstuff originating there, the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area. Article 2(2)(b) defines a ‘geographical indication’ as the name of a region, a specific place or a country, used to describe an agricultural product or a foodstuff originating there, which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area.

8. Article 3 then indicates two instances where particular names may not be registered.

9. In particular, Article 3(1) provides:

‘Names that have become generic may not be registered.

For the purposes of this Regulation, a “name that has become generic” means the name of an agricultural product or a foodstuff which, although it relates to the place or the region where this product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff.

To establish whether or not a name has become generic, account shall be taken of all factors, in particular:

– the existing situation in the Member State in which the name originates and in areas of consumption,

– the existing situation in other Member States,

– the relevant national or Community laws.

Where, following the procedure laid down in Articles 6 and 7, an application of registration is rejected because a name has become generic, the Commission shall publish that decision in the Official Journal of the European Communities .’

10. Article 5 sets out the procedure that a Member State must follow when an application for registration of a name is made. The relevant provisions of Article 5(5) (8) read:

‘The Member State shall check that the application is justified and shall forward the application … to the Commission, if it considers that it satisfies the requirements of this Regulation.

That Member State may, on a transitional basis only, grant on the national level a protection in the sense of the present Regulation to the name forwarded in the manner prescribed, and, where appropriate, an adjustment period, as from the date of such forwarding …

Such transitional national protection shall cease on the date on which a decision on registration under this Regulation is taken. When that decision is taken, a period of up to five years may be allowed for adjustment, on condition that the undertakings concerned have legally marketed the products in question, using the names concerned continuously, for at least five years prior to the date of the publication provided for in Article 6(2).’

11. Article 13 details the protection afforded to registered names. The relevant parts of that article read:

‘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 insofar 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 … “type”…

(c) any other false or misleading indication as to the provenance … of the product … 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.

…

3. Protected names may not become generic.

…’

Directive 2000/13

12. Directive 2000/13 approximates the laws of the Member States on, inter alia, the labelling of foodstuffs. Recital 6 in the preamble to the directive states that ‘[t]he prime consideration for any rules on the labelling of foodstuffs should be the need to inform and protect the consumer’.

13. The relevant provisions of Article 2 read as follows:

‘1. The labelling and methods used must not:

(a) be such as could mislead the purchaser to a material degree, particularly:

(i) as to the characteristics of the foodstuff and, in particular, as to its … origin or provenance …

…

3. The prohibitions or restrictions referred to in [paragraph] 1 … shall also apply to:

(a) the presentation of foodstuffs, in particular their shape, appearance or packaging, the packaging materials used, the way in which they are arranged and the setting in which they are displayed;

(b) advertising.’

14. The relevant provisions of Article 5 read as follows:

‘1. The name under which a foodstuff is sold shall be the name provided for in the Community provisions applicable to it.

(a) In the absence of Community provisions, the name under which a product is sold shall be the name provided for in the laws, regulations and administrative provisions applicable in the Member State in which the product is sold to the final consumer or to mass caterers.

Failing this, the name under which a product is sold shall be the name customary in the Member State in which it is sold to the final consumer or to mass caterers, or a description of the foodstuff, and if necessary of its use, which is clear enough to let the purchaser know its true nature and distinguish it from other products with which it might be confused.’

Directive 89/104

15. Directive 89/104 is the first approximation of the laws of the Member States relating to trade marks.

16. The relevant provisions of Article 3(1) read as follows:

‘The following shall not be registered or if registered shall be liable to be declared invalid:

…

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

…’

17. Article 15(2) reads as follows:

‘By way of derogation from Article 3(1)(c), Member States may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective, guarantee or certification marks. Such a mark does not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.’

Facts, procedure and questions referred

18. The municipality of Felino is situated in the Emilia-Romagna region of Italy. Cavazzuti SpA, now Grandi Salumifici Italiani SpA (‘GSI’), produces a salami sausage which it markets as ‘Salame Felino’ and/or ‘Salame tipo Felino’. (9) It produces this salami in Modena (also situated in the Emilia-Romagna region, some 50km from Felino), and has done so since approximately 1970.

19. On 16 May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI had infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy.

20. At the time that the penalty was issued the name ‘Salame Felino’ was neither registered as a PDO nor as a PGI. The order for reference states that, following submissions from the Associazione per la Tutela del Salame Felino (Association for the Protection of Salame Felino, ‘APTSF’) and the Associazione delle Industrie delle Carni (Meat Industry Association, ‘ASSICA’), an application was made for recognition of ‘Salame Felino’ as a PGI under Regulation No 2081/92. However, at the time of the reference, that application had not led to the registration of the name.

21. GSI applied to the Tribunale Civile di Modena, seeking a ruling overturning the administrative penalty on the grounds that the name ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:

‘1. Must Articles 3(1) and 13(3) of Regulation (EC) No 2081/92 (now Articles 3(1) and 13(2) of Regulation (EC) No 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must Articles 3(1) and 13(3) of Regulation (EC) No 2081/92 (now Articles 3(1) and 13(2) of Regulation (EC) No 510/06) read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC) be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation (EEC) No 2081/92 (now Regulation (EC) No 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’

22. GSI, the Emilia-Romagna region, the APTSF, the Greek and Italian Governments and the Commission presented written observations and subsequently made oral submissions at the hearing.

Preliminary remarks

23. The penalty imposed on GSI concerns an infringement of Article 2 of Legislative Decree 109/92. The assessment to be made by the national court is therefore a straightforward one: whether GSI has misled customers by the use of the name ‘Salame tipo Felino’ on its labelling. The Tribunale di Modena has asked the Court to clarify the effect which a number of factors may have upon that assessment.

24. One such factor is the value of the name itself. The first question referred to the Court asks when and why a name may be considered to be generic. The answer to that question necessitates only an examination of the registration scheme provided in Regulation No 2081/92. However, in the context of the issue before the referring court, it is also necessary for the Court to examine the effect that a determination that a name is generic will have on the national court’s appreciation of the use of that name on a label.

25. That requires the Court to state clearly the manner in which Regulation No 2081/92 interacts with Directive 2000/13. I shall address this in my response to the second question, before considering the impact which the good faith of a company, and the length of time during which a name is used, may have on a court’s assessment of an allegedly misleading label.

The first question

26. The referring court, by its first question, asks whether a geographical name, for which the submission of an application for registration as a PDO or a PGI has been rejected or blocked, must be considered generic at least throughout the period for which such rejection or blocking remains effective.

Admissibility

27. There have been two separate objections to admissibility.

28. First, the APTSF and the Italian Government have contested the facts upon which the question is based. The Italian Government submits that there has been no rejection or blocking in the registration process. The APTSF submits that the application for registration of the name now only needs to undergo the formality of publication.

29. I cannot accept either of those submissions as a basis for holding the first question inadmissible.

30. Article 234 EC is based on a clear separation of functions between the national courts and the Court of Justice. Factual matters fall within the jurisdiction of the national courts, whilst the role of the Court of Justice is to give guidance as to the interpretation of Community law. It follows that the Court of Justice must take as the basis for its judgment in a reference for a preliminary ruling the facts as they are stated by the national court in the order for reference. (10)

31. The order for reference makes it clear that, at the material time, the application under Regulation No 2081/92 was pending and the name ‘Salame Felino’ was not on the register. The reasons why that was, or may have been, so are quite immaterial to the analysis of the questions referred.

32. Second, the Italian Government and the Commission argue that the first question is inadmissible because it rests on the erroneous assumption that the scope of Article 2 of Directive 2000/13 may be delimited by the Regulation. Moreover, in the Commission’s view, it is unnecessary for the resolution of the case before the national court first to address the question whether a name is generic during the registration process under Regulation No 2081/92. The Commission considers that the national court should resolve the case before it solely by reference to the national provisions implementing Directive 2000/13.

33. Although the Commission’s submissions are pertinent, it is quite possible that the registration of a name (or its classification as generic) under Regulation No 2081/92, while not delimiting the scope of Article 2 of Directive 2000/13, will affect a court’s determination as to whether a label which uses that name is misleading for the purposes of Directive 2000/13. The resolution of the first question is thus a preliminary step that is potentially necessary to the proper resolution of the second question.

34. I therefore consider that the Court should answer the first question.

Substance

35. Regulation No 2081/92 sets out a system whereby a name indicating the provenance of a product may be registered on a list of names protected at Community level. The Commission evaluates whether that name may be granted protection. Under Article 3(1), the Commission may refuse to register a name on the ground that, inter alia, it finds that name to be generic.

36. However, unless and until the Commission rejects an application specifically on that ground, it cannot be said that the name has been found to be generic within the meaning of the Regulation.

37. Nor can there be any basis for assuming that a geographical name is generic until it has been held not to be so. In many cases, such a name will be purely informative. In some instances it will be deserving of protection under the Regulation. However, there is nothing in the material before the Court to show that it is the usual development for a geographical name to become generic as a designation of a foodstuff.

38. Consequently, and contrary to GSI’s submissions, a national court cannot assume, while a name is undergoing the registration process, that it is generic unless and until the Commission finds it to be so.

39. There can likewise be no assumption that the name is not generic within the meaning of the Regulation. (11)

40. Here, the referring court must determine whether GSI’s use of the contested designation could indeed mislead purchasers to a material degree, within the meaning of Article 2(1) of Directive 2000/13. When deciding that question in the absence of a final assessment by the Commission under Regulation No 2081/92, the referring court may need to take into account characteristics of the name that would also be taken into account by the Commission in assessing whether the name merits protection, or is generic, within the meaning of the Regulation. To that end, it may have regard to this Court’s case-law on the Regulation.

41. The Court has taken as its point of departure the definition in Article 3(1), that a foodstuff’s name is generic when (although related to the place or region where the foodstuff was originally produced or marketed) that name has become the common name of that foodstuff. (12) It has held that the generic nature of a name should be determined by examining, inter alia, the existing situation in the Member State in which the name originates and in areas of consumption, in other Member States, and the relevant national or Community laws. (13)

42. In the light of the above, I suggest that, in response to the first question posed by the referring court, the Court should hold that a name cannot be assumed to be generic within the meaning of Regulation No 2081/92 until an application for protection of the name has been rejected by the Commission on the ground that the name has become generic.

The second question

43. By its second question, the referring court asks whether the name of a foodstuff which is evocative of a place, but which is not registered as a PDO or PGI, may be legitimately used by producers who have used it in good faith and uninterruptedly for a considerable period since before the entry into force of Regulation No 2081/92.

Admissibility

44. The APTSF argues that the second question is inadmissible because it is based on an error of fact. For the reasons set out at point 30 this argument should be rejected.

45. The Italian Government submits that the second question is inadmissible because neither Community law nor national law have regard to good faith when assessing labelling. That is a substantive submission. I shall therefore examine it when I consider the substance of the second question.

Substance

The interaction between Directive 2000/13 and Regulation No 2081/92

46. Directive 2000/13 and Regulation No 2081/92 operate on different levels and were intended by the Community legislator to attain different objectives.

47. Directive 2000/13 approximates the laws of the Member States relating to the labelling of foodstuffs, thus contributing to the smooth functioning of the internal market. The prime consideration for any rules on labelling, as noted in recital 6 in the preamble, is the need to inform and protect the consumer. As the Italian Government correctly observes, in order to do this, Directive 2000/13 obliges producers to put sufficient information on labels to enable consumers to choose in full knowledge of the facts. That includes providing information on the exact nature and characteristics of the product, including origin or provenance.

48. By contrast, the Regulation’s purpose is more elaborate. It starts from the premiss that promoting products having certain characteristics can be of considerable benefit to the rural economy by improving the incomes of farmers, (14) and that consumers’ quests for specific quality products generates a growing demand for agricultural products or foodstuffs with an identifiable geographical origin. (15) The Regulation promotes the provision of clear and succinct information regarding the origin of products in order to enable consumers to make the best choice, (16) envisaging special provisions for agricultural products and foodstuffs from a specified geographical area. (17) To do so, the Regulation puts in place a framework of Community rules to provide uniform protection for registered designations of origin and geographical indications, thus ensuring fair competition between producers and enhancing the credibility of the products concerned in consumers’ eyes. (18) Thus, whilst the protection of geographical designations undoubtedly has an effect on consumer choices, the Regulation’s objectives are wider than just ensuring consumer protection.

49. Despite these differing objectives and spheres of operation, the use of geographical names on the labels of foodstuffs is capable of falling within the ambit of both the Regulation and Directive 2000/13. There are three distinct situations in which that might be so: first, where the name used on a foodstuff’s label has been assessed by the Commission and registered under the Regulation; second, where it has been assessed but found to be generic; third, where no assessment under the Regulation has been completed. The present reference concerns only the third situation. However, for the sake of completeness I shall first address briefly the other two situations.

– A registered name

50. When a name has been assessed by the Commission and placed on the register established by the Regulation, the use of that name may be restricted.

51. If such a name is used when the conditions for its use are not met, or in a way that is contrary to Article 13(1) of the Regulation, such use will also be likely to ‘be such as could mislead the purchaser to a material degree, particularly as to the characteristics of the foodstuff, and, in particular, as to its … origin or provenance’ within the meaning of Article 2(1)(a)(i) of Directive 2000/13.

– A generic name

52. As the Commission correctly argues in its submissions on admissibility, when a name has been assessed and found to be generic under the Regulation, a national court is not thereby precluded from assessing whether the use of that name on a foodstuff’s label is misleading under the rules set out in Directive 2000/13.

53. GSI submits that when a name has been found to be gen eric, it is not entitled to protection under the scheme of the Regulation. That is quite true; but I cannot agree with the inference that GSI seeks to draw, namely the use of such a name on a label cannot be found to be misleading under Directive 2000/13.

54. On the contrary, it seems clear that there are circumstances in which a consumer could indeed be misled by the use of a generic name on the labelling of a product (one might, for example, envisage a foodstuff which was labelled with a generic name, but did not share any of the characteristics which are commonly linked with that name in the mind of the consumer).

55. It follows that, if a name has been found to be generic, a national court may nevertheless assess whether the label on a particular foodstuff is misleading under Article 2 of Directive 2000/13.

56. In that regard, the national court should bear in mind the fact that the Commission’s determination that a name is generic is based upon an appraisal of the characteristics of that name. It follows that those characteristics, and the Commission’s subsequent finding that the name is generic, will be significant factors that a national court should take into account when assessing whether or not the consumer is misled by the use of the name in the labelling of foodstuffs. (19)

– An unassessed name

57. As I have already indicated in my answer to the first question, where the name has not been assessed by the Commission, it cannot be held to be generic within the meaning of Regulation No 2081/92.

58. On the other hand, until the Commission makes its decision, a name which has been submitted to the Commission for consideration is not protected by the Regulation unless the Member State elects to make use of the facility afforded it by Article 5(5) to grant transitional protection.

59. In the absence of such transitional protection, the national court needs merely to assess whether the use of the name in labelling is misleading by reference to the national legislative provisions transposing Article 2 of Directive 2000/13.

60. Those provisions should not, however, be used as a basis for establishing a parallel system of protection of an unregistered geographic name. In the context of the present case, although the national courts may consider that the name ‘Salame Felino’ fulfils the conditions for registration set out in the Regulation, (20) those courts must evaluate its use only by reference to the provisions transposing Article 2 of Directive 2000/13.

61. Thus, the question for the national court is, purely and simply, whether the labelling used on the salami produced by GSI could mislead the reasonably well-informed, observant and circumspect Italian consumer. (21)

62. In deciding that question, the national court should ask itself whether the consumer could be misled as to the provenance of the product. It should do so by considering the link between the product itself and the geographical area indicated by the name. Under Article 2 of Directive 2000/13, a label which uses a name suggesting or indicating provenance can perhaps be said to be prima facie misleading if the product is entirely produced elsewhere and has no link to the geographical territory indicated at any point during the process of manufacture.

63. The national court should also have regard to whether the consumer could be misled as to another characteristic of the product. In doing so, the court should evaluate whether the name, as it appears on the labelling, is specific to a region or has become the general name used to designate a product with particular characteristics. (22) In making that evaluation, it would be proper for a national court to take into account comments and submissions similar to those which would be made to the Commission in an application for protection under the Regulation, or in a notice of opposition to such an application.

64. As regards the wording of the label, the use of the word ‘type’ may be evidence that the name is being used to convey the characteristics of a product rather than its origin. However, as the Commission rightly points out, the use of that word does not guarantee that the label is not misleading.

65. The national court should also have regard to the presentation of the packaging, in particular the positioning and size of a geographical name and the description of the place of manufacture. (23) Article 3(1)(8) of Directive 2000/13 states that, subject to the exceptions also contained within that directive, it is compulsory to indicate on the labelling of foodstuffs the particulars of the origin or provenance where failure to give such particulars might mislead the consumer to a material degree as to the true origin or provenance of the foodstuff. In practice, this must mean that the labelling – even if the geographical name is intended to advertise the characteristics of a foodstuff – must ‘tell the whole truth’ so as not to mislead the reasonably well-informed, observant and circumspect consumer.

The relevance of good faith and length of use

66. Directive 2000/13 makes no mention of either good faith or length of use. In particular, it does not state that the use of a name in good faith, or for a long and uninterrupted period of time, can constitute a defence against an allegation of misleading labelling.

67. National courts are required to evaluate alleged infringements of national laws transposing Article 2 of Directive 2000/13 by reference to the impression which the use of a name on the labelling of a foodstuff gives to the reasonably well-informed, observant and circumspect consumer.

68. It seems to me that, as a matter of logic, if a particular factor may change the expectations of the reasonably well-informed, observant and circumspect consumer (as Italy notes), it would be entirely reasonable for a national court to take that factor into account in its assessment of whether a foodstuff’s label could mislead a consumer.

69. The length of time for which a name has been used is an objective factor, which might affect the expectations of the reasonable consumer. By contrast, I cannot see how the (subjective) good faith of a manufacturer or retailer can affect the (objective) impression given to the consumer by the use of a geographical name on a label.

70. Accordingly, I suggest that, in response to the second question posed by the referring court, the Court should hold that the name of a food product which is evocative of a place, but not registered as a PDO or PGI, may legitimately be used provided that the name is not used in a way which is likely to mislead the average reasonably well-informed, observant and circumspect consumer. In assessing whether that is the case, national jurisdictions may have regard to the length of time during which the name has been used. The good faith (or otherwise) of the producer is, however, irrelevant.

The third question

Admissibility

71. The Italian Government argues that the third question is inadmissible because the case before the national court does not concern collective trade marks. The region of Emilia-Romagna neither holds the mark, nor alleges that GSI infringed it. Moreover, the Italian Government suggested at the hearing that the referring court was concerned only with whether GSI’s labelling was likely to mislead the consumer, and that despite the APTSF’s intervention in the proceedings, an allegation that a collective trade mark had been infringed was no part of the case before the national court.

72. The Court may decline to answer a question referred for a preliminary ruling if it has no relation to the actual facts of the main action or to its purpose. (24) The third question referred asks whether Directive 89/104 might provide another basis for preventing GSI from using the name ‘Salame Felino’. However, the administrative penalty contested in the main proceedings was based solely on an alleged infringement of the national provisions transposing Article 2 of Directive 2000/13.

73. Although the administrative penalty noted that ‘Salame Felino’ is a registered mark, that was in the course of establishing that GSI’s use of ‘Salame tipo Felino’ was misleading to consumers. Similarly, GSI referred to the use in good faith of the name ‘Salame Felino’ by traders outside the municipality of Felino in relation to a collective trade mark as part of its argument that its use of the name on labelling did not mislead consumers.

74. The absence of any allegation that there has been an infringement of a collective trade mark (25) indicates that the question of whether a holder of a collective trade mark may oppose the use in good faith of a name similar to that found in the collective mark is irrelevant to the central issue before the national court, namely, the circumstances in which a company is likely to mislead consumers by the use of a geographical name on the labelling of its products.

75. The third question is therefore inadmissible.

Conclusion

76. I therefore propose that the Court should answer the first two questions referred by the Tribunale Civile di Modena as follows:

(1) Articles 3(1) and 13(3) 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 (now Articles 3(1) and 13(2) of Council Regulation (EC) No 510/06) must be interpreted as meaning that the name of a food product containing geographical references, for which an application has been made for registration as a protected designation of origin or a protected geographical indication within the meaning of those regulations, cannot be assumed to be generic unless and until the application has been rejected by the Commission on the ground that the name has become generic.

(2) The same provisions, read with Article 2 of Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs, must be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a protected designation of origin or a protected geographical indication within the meaning of those regulations, may legitimately be used provided that the name is not used in a way which is likely to mislead the average reasonably well-informed, observant and circumspect consumer. In assessing whether that is the case, national jurisdictions may have regard to the length of time during which the name has been used. The good faith (or otherwise) of the producer is, however, irrelevant.

(1) .

(2) – OJ 1992 L 208, p. 1 (‘Regulation No 2081/92’ or ‘the Regulation’).

(3) – OJ 2000 L 109, p. 29 (‘Directive 2000/13’). This directive replaced Council Directive 79/112/EEC of 18 December 1978 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs for sale to the ultimate consumer (OJ 1979 L 33, p. 1) (‘Directive 79/112’).

(4) – OJ 1989 L 40, p. 1 (‘Directive 89/104’). This directive was repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), but was in force when the facts of the case before the national court arose.

(5) – This regulation was replaced, with effect from 31 March 2006, by 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). Articles 3(1) and 13(3) of the earlier regulation are now reproduced in the later regulation as Articles 3(1) and 13(2) respectively. Neither these provisions nor the replacements of any other provisions which I cite have changed in a way that would affect the resolution of the questions referred. Although the contested penalty (see infra, point 21) was imposed after the latter regulation came into effect, the alleged infringements in the present case took place in 2002. I therefore refer to the provisions of the earlier regulation, and my comments apply, mutatis mutandis, to the latter.

(6) – As underlined by the ninth recital in the preamble to the Regulation.

(7) – The first recital of Directive 2000/13 states that that directive was intended to consolidate the changes made to Directive 79/112. Directive 2000/13 has subsequently been interpreted on that basis (see, for example, point 53 of the Opinion of Advocate General Stix-Hackl in Case C‑315/05 Lidl Italia [2006] ECR I‑11181).

(8) – The first three subparagraphs. The second and third subparagraphs are as amended by Council Regulation (EC) No 535/97 of 17 March 1997 (OJ 1997 L 83, p. 3).

(9) – The latter translates into English as ‘Felino-type Salami’.

(10) – See most recently Case C‑491/06 Danske Svineproducenter [2008] ECR I‑3339, paragraph 23 and the case-law cited therein.

(11) – The fact that under Article 5(5) of the Regulation, where an application for the protection of a name has been submitted to the Commission by the relevant authorities of a Member State, that Member State may give transitional protection to that name within its own borders while the application is pending does not seem to me to affect the position one way or the other.

(12) – At point 133 of his Opinion in Joined Cases C‑465/02 and C‑466/02 Germany and Denmark v Commission [2005] ECR I‑9115, Advocate General Ruíz-Jarabo Colomer states, as part of a helpful clarification of the nature of a generic name, that generic names are names which have undergone a process of vulgarisation. In my view this definition neatly encapsulates the term.

(13) – Germany and Denmark v Commission , paragraphs 75 to 100, and Case C‑132/05 Commission v Germany [2008] ECR I‑957, in particular at paragraph 53.

(14) – The second recital in the preamble to the Regulation.

(15) – The third recital in the preamble to the Regulation.

(16) – The fourth recital in the preamble to the Regulation.

(17) – The fifth recital in the preamble to the Regulation.

(18) – The seventh recital in the preamble to the Regulation.

(19) – See further, point 60 et seq.

(20) – The APTSF referred to a number of national judgments in this respect. However, such a determination under the Regulation is to be made by the Commission, and the Commission alone.

(21) – See Case C‑470/93 Mars [1995] ECR I‑1923, paragraph 24; Case C‑210/96 Gut Springenheide and Tusky [1998] ECR I‑4657, paragraph 31; and Case C‑220/98 Estée Lauder [2000] ECR I‑117, paragraph 30. At point 54 of his Opinion in Case C‑239/02 Douwe Egberts [2004] ECR I‑7007, Advocate General Geelhoed added that this presupposes that, before acquiring a given product (for the first time), a consumer will always take note of the information on the label and that he is also able to assess the value of that information.

(22) – Unless the name in question is a simple geographical indication of source and is not intended to convey information to the consumer as to the characteristics of the product: see Case C‑312/98 Warsteiner Brauerei [2000] ECR I‑9187, paragraph 44.

(23) – On this note, it seems to me that information indicating where a company’s headquarters are located does not necessarily tell consumers where a product was actually made.

(24) – See Case C‑295/05 Asemfo [2007] ECR I‑2999, paragraph 31.

(25) – Indeed, the APTSF, which holds two figurative collective trade marks, argues that it is not even possible for the use of a geographical name to infringe those trade marks.