31/10/2013 – Spain, an important ruling on PDO/PGI “evocation”

In an action brought by the Consejo Regulador of the PDO “Queso Tetilla”, the Commercial Court of appeal of Alicante has prohibited the commercialization of cheese not complying with the specifications of the PDO under the trade mark “Mamiella Tres Oscos”. The package of such product reproduced the typical shape which distinguishes the PDO.

“Queso Tetilla” is a Spanish PDO protecting a cheese produced in the region of Galicia whose most recognizable feature is its singular conical shape which resembles a female breast, and from which the expression “Tetilla” originates.

In its Judgement nº 419/13 of 31 October 2013, the Commercial Court of appeal of Alicante held that “the PDO Queso Tetilla protects a traditional name which the consumers inexorably associate with a conical shape, given that the name of the PDO does not correspond with a region or a specific place, but with a cheese having a special and well-known format”. Consequently, the unauthorised commercialization of cheese with an identical shape is deemed to be an infringement of this PDO according to article 13(1)(b) of Regulation (EU) nº 1151/2012 on quality schemes for agricultural products and foodstuffs, which protects PDO and PGI, among others, against evocation. The Court concludes that the “evocation may not only arise from the use of a word, but also from other practices so that when the consumer is confronted with the shape of the product the image triggered in his mind is that of the product whose designation is protected”.

Previously, the Commercial Court of first instance, in its Judgement nº 58/13 of 20 March 20 2013, had already found that the use of the term “Mamiella” with regard to cheese constitutes an infringement of the PDO “Queso Tetilla”. Although not being similar to each other, the Court of first instance concluded that the term “Mamiella”, which comes from the Latin word “mama” (breast), evokes the PDO “Queso Tetilla”. In this regard, the Court furthermore invalidated the registration of the trade mark “Mamiella Tres Oscos”.

These Judgements represent an interesting interpretation of the PDO and PGI law in the EU, by clarifying that the scope of protection of these rights cover cases in which the sign used by a third party does not present similarity with the protected expression and, in particular, to cases of unauthorised reproduction of the external appearance of the product.


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