Commission of the European Communities v Federal Republic of Germany.
Date: 2008-02-26
29. It must however be pointed out that the lack of a declaration that, for certain elements of a designation, the protection conferred by Article 13 of Regulation No 2081/92 was not requested, cannot constitute a sufficient basis for determining the scope of that protection (see, to that effect, Chiciak and Fol , paragraph 37).
30. Under the system of protection created by Regulation No 2081/92, questions concerning the protection to be accorded to the various constituent parts of a name, in particular the question whether a generic name or a constituent part protected against the practices referred to in Article 13 of that regulation may be concerned, are matters which fall for determination by the national court on the basis of a detailed analysis of the facts presented before it by the parties concerned ( Chiciak and Fol , paragraph 38).
44. With regard to the evocation of a PDO, the Court has held that that term 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 brought to his mind is that of the product whose designation is protected (Case C-87/97 Consorzio per la tutela del formaggio Gorgonzola  [1999] ECR I-1301, paragraph 25).
45. The Court has pointed out that it is possible for a PDO 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 ( Consorzio per la tutela del formaggio Gorgonzola , paragraph 26).
46. In the present case, there is phonetic and visual similarity between the names ‘Parmesan’ and ‘Parmigiano Reggiano’, and that in a situation where the products at issue are hard cheeses, grated or intended to be grated, namely, where they have a similar appearance (see, to that effect, Consorzio per la tutela del formaggio Gorgonzola , paragraph 27).
47. In addition, regardless whether the name ‘Parmesan’ is or is not an exact translation of the PDO ‘Parmigiano Reggiano’ or of the term ‘Parmigiano’, the conceptual proximity between those two terms emanating from different languages, which was revealed in discussions before the Court, must also be taken into account.
48. That proximity and the phonetic and visual similarities referred to in paragraph 46 above are such as to bring to the mind of the consumer the cheese protected by the PDO ‘Parmigiano Reggiano’, when he is confronted by a hard cheese, grated or intended to be grated, bearing the name ‘Parmesan’.
52. It is for the Federal Republic of Germany to prove that argument to be well founded, all the more so because the Court has already held that it is far from clear that the designation ‘Parmesan’ has become generic ( Bigi , paragraph 20).
53. When assessing the generic character of a name, the Court has held that it is necessary, under Article 3(1) of Regulation 2081/92, to take 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 (see Joined Cases C-465/02 and C-466/02 Germany and Denmark  v Commission  [2005] ECR I-9115, paragraphs 76 to 99).
55. According to the documents in the case, in Germany, certain producers of cheese called ‘Parmesan’ market that product with labels referring to Italian cultural traditions and landscapes. It is legitimate to infer from this that consumers in that Member State perceive ‘Parmesan’ cheese as a cheese associated with Italy, even if in reality it was produced in another Member State (see to that effect Germany and Denmark  v Commission , paragraph 87).
56. Finally, at the hearing, the Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO ‘Parmigiano Reggiano’ and imported into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name ‘Parmesan’ (see, to that effect, Germany and Denmark  v Commission , paragraph 88).
68. In that regard, it should be pointed out that the right of individuals to rely on the provisions of a regulation before their national courts cannot release the Member States from their duty to take the national measures which may be needed to ensure its full application (see, inter alia, Case 72/85 Commission  v Netherlands  [1986] ECR 1219, paragraph 20).