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23 April 2012
On March 17 2012 the IP Division of the Court of Milan issued a landmark decision concerning the protection in Italy of 'Emmentaler/Emmental Svizzero' - a Swiss protected denomination of origin. The court found that the denomination in question should be protected in Italy, although it was not registered at EU level, on the basis of the Stresa Convention 1951. The convention, which deals with denominations of cheeses, was found to be valid and binding on Italy in its relations with Switzerland, notwithstanding that the latter is not an EU member state.
The suit was brought by a Swiss consortium, Emmentaler Switzerland, against a Swiss manufacturer and Italian importers and resellers which marketed their cheese as 'Emmentaler' or 'Emmental Svizzero', although the products in question did not comply with the Swiss regulation on the use of the denomination in question. The consortium claimed that the use of the denomination in Italy for a cheese which had not been manufactured according to the regulation governing the Swiss protected denomination of origin amounted to:
"[any] false indication about the origin, kind, nature or specific qualities of the cheeses, affixed to the same [products] or to products with which they may be confused, which are put into circulation, imported, stored, offered for sale or sold, both in internal commerce and export"; and
In this respect the consortium referred to EU case law. It indicated that the European Court of Justice (ECJ) had previously found - in decisions on geographical denominations not registered as protected denominations of origin or protected geographical indications - that:
"designation of a foodstuff containing geographical references, which is not registered as a protected designation of origin or a protected geographical indication, may legitimately be used on condition that the labelling of the product so named does not mislead the average reasonably well informed, observant and circumspect consumer."(1)
In connection with the convention, the court referred to the position in EU case law that under Article 351 of the Treaty on the Functioning of the European Union, agreements previously signed between one or more EU member states and a third country must be deemed to apply even if they conflict with the provisions of the treaty itself and the subsequent EU legislation derived from it.(2)
On this basis, the court dismissed a request to involve the ECJ in the interpretation of the EU provisions on protected designations of origin or a protected geographical indications, as the defendants had suggested.
The convention requires signatory states to "prohibit and pursue on the… territory and in the languages of the country or in a foreign language, the use of designations of origin, denomination or indications" which are contrary to the provisions of the convention, and more particularly to take action under Article 1.
The denominations included in Annex B of the convention (including 'Emmental') are defined as those whose use in the territory of the contracting country that is indicated in relation to them in the annex (ie, Switzerland, in this case) is subject to internal public rules and is reserved for cheeses which have "well-defined characteristics"(3) set by "the contracting party in question".(4)
The only difference between the designations in Annex A and Annex B is that those in the first group are subject to an absolute right of use, being "exclusively reserved for those cheeses, both alone... and accompanied by a qualifying adjective or by an expression that would qualify its meaning, such as 'type'".(5) The denominations in the second category may be used by contracting parties from whose territory the cheese did not traditionally originate, provided that the terms are:
Thus, on the basis of the convention, it is permissible to have a 'French Emmental' and a 'Bavarian Emmental', provided that such cheeses are:
However, a cheese that is presented merely as 'Emmental', 'Emmentaler' or 'Swiss Emmental' can be marketed in the contracting country only if it has been manufactured in Switzerland in compliance with the provisions set forth by the Swiss authorities.
The court clarified that the convention makes reference to the legislation of the country from which the denomination of origin derives, in order to determine the conditions on which such denominations may be lawfully used. Thus, in Italy, a cheese can be sold as 'Swiss Emmental' only if its method of production complies with the regulations for the Swiss protected denomination of origin. Such rules are not superseded by the Codex Alimentarius, the body of harmonised international food standards.
The court upheld the right of the consortium to file its action in Italy in order to stop the unlawful use of the relevant denomination of origin and to claim compensation for reputational damage and loss of investment in related advertising, among other things. In so doing, it referred to Article 2601 of the Civil Code, which allows associations of manufacturers to file actions to prevent acts of unfair competition which may jeopardise their members' interests, and Article 10(3) of the Paris Convention on the Protection of Industrial Property. Both had been invoked by the plaintiff, in addition to the Swiss rules on the basis of which the consortium had been established.
There is no agreement between the European Union and Switzerland to give EU-level protection to the denomination 'Emmental', although negotiations are still ongoing and in May 2011 such protection was recognised for Gruyère and Sbrinz, both of which are included in Annex B of the convention.
In Italy, legal commentators have been unanimously critical of the ECJ's statement(6) that the EU regulation on denominations of origin:
"precludes the application of a system of protection laid down by agreements between two Member States, such as bilateral treaties, which confers on a designation, recognised under the law of a Member State as constituting a designation of origin, protection in another Member State where that protection is actually claimed despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation."
In particular, it has been argued that this interpretation:
"would be in contrast with the TRIPs [Agreement], which seems to acknowledge protection to all qualified geographical denominations - that is, for those where there is a relationship between territory and quality, or territory and reputation - without considering that for them, there provisions of use are set out, or else the same are registered."(7)
There is support for the view that such protection should also apply in cases where there is no registration and in those which, for any reason, do not fall within the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights.(8) Making the point more emphatically, it has been noted that no provision of the treaty gives exclusive jurisdiction to the European Union in this matter.(9)
(2) See C-249/06, Decision of March 3 2009; C-812/79, Decision of October 14 1980; C-84/98, Decision of July 4 2000; C-216/01, Decision of November 18 2003; and - in the particular context of the connection - C-286/96, Decision of September 22 1988.
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