Consorzio per la tutela del formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH & Co. KG and Eduard Bracharz GmbH.
Date: 1999-03-04
16 Even though, strictly speaking, the national court has directed its questions solely to the interpretation of Articles 30 and 36 of the Treaty, the Court is not thereby precluded from providing the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court has specifically referred to them in its questions (see, in particular, to that effect Case C-241/89 SARPP [1990] ECR I-4695, paragraph 8, and Case C-315/92 Verband Sozialer Wettbewerb (`Clinique') [1994] ECR I-317, paragraph 7).
18 The plaintiff argues that, in so far as the protection afforded by a Member State to a designation of origin is wider in scope than that available under Community law, that national protection continues after the designation has been registered in accordance with Regulation No 2081/92.  That argument is, however, contradicted by the wording of Article 17(3) of that regulation, which permits Member States to maintain national protection of a name only until such time as a decision has been taken on its registration as a name protected at Community level (see, to that effect, Joined Cases C-129/97 and C-130/97 Chiciak and Fol [1998] ECR I-3315, paragraph 28).  Consequently, only the legal rules laid down by Regulation No 2081/92 are, together with the Treaty rules, relevant for the purpose of answering the questions referred.
20 Articles 30 and 36 of the Treaty do not preclude the application of rules laid down by a bilateral convention between Member States on the protection of indications of provenance and designations of origin, provided that the protected names have not become generic in the country of origin (see Case C-3/91 Exportur [1992] ECR I-5529, paragraph 39).  A fortiori, they do not preclude Member States from taking the measures necessary for the protection of names registered in accordance with Regulation No 2081/92 and which, as such, pursuant to Article 3 of that regulation, are not generic.  In order to give the national court a useful answer in the present case, it is therefore enough to provide it with the interpretation of the Community provisions governing the possibility of continuing to use a trade mark such as `Cambozola'.
25 `Evocation', as referred to in Article 13(1)(b) of Regulation No 2081/92, 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.
26 As the Advocate General states in points 37 and 38 of his Opinion, it is possible, contrary to the view taken by the defendants, for a protected designation to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue.
27 Since the product at issue is a soft blue cheese which is not dissimilar in appearance to `Gorgonzola', it would seem reasonable to conclude that a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two terms is obvious.
28 In that connection, it would also seem appropriate for the national court to take into account advertising material published by Käserei Champignon and placed before the courts by the plaintiff, which suggests that the phonetic similarity between the two names is not fortuitous.
41 As to that, the circumstances contemplated in Article 3(1)((c) of the First Directive 89/104 do not apply to the present case.  The circumstances envisaged in the other two relevant provisions of that directive - refusal of registration, invalidity of the trade mark, or revocation of the proprietor's rights, which preclude its use being continued under Article 14(2) of Regulation No 2081/92 - presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see, on that subject, Clinique, cited above, Case C-470/93 Mars [1995] ECR I-1923, and Case C-313/94 Graffione [1996] ECR I-6039, paragraph 24).
42 Once again it is for the national court to apply those tests to the facts of the case before it.  Although the term `Cambozola', which evokes the designation `Gorgonzola', cannot on that ground alone be deemed liable to deceive the public as to the nature, quality or origin of the goods designated, the assessment to be carried out with respect to the conditions for its use presupposes consideration of the facts of the case, an exercise which falls outside the Court's jurisdiction under Article 177 of the Treaty (see, to that effect, Graffione, paragraphs 25 and 26).
43 The answer to the questions referred must therefore be that, in the present state of Community law, the principle of the free movement of goods does not preclude Member States from taking the measures incumbent upon them in order to ensure the protection of designations of origin registered under Regulation No 2081/92.  Use of a name such as `Cambozola' may therefore be deemed, for the purposes of Article 13(1)(b) of that regulation, to evoke the protected designation of origin `Gorgonzola', irrespective of the fact that the packaging indicates the product's true origin.  It is for the national court to decide whether, on the facts, the conditions laid down in Article 14(2) of Regulation No 2081/92 allow use of an earlier trade mark to continue notwithstanding the registration of the protected designation of origin `Gorgonzola', having regard in particular to the law in force at the time of registration of the trade mark, in order to determine whether such registration could have been made in good faith, on the basis that use of a name such as `Cambozola' does not, per se, constitute an attempt to deceive the consumer.