This is an informal case
summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP
Judges Forum.
Session 3: Emerging Issues in Geographical Indications
Supreme Court of Spain (Civil Bench) [2019]: Fundación
Consejo Regulador de la Denominación de Origen protegida Queso Manchego v
Industrial Quesera Cuquerella SL and Juan Ramón Cuquerella Montagud, Case No.
451/2019
Date of judgment: July 18, 2019
Issuing authority: Civil Bench of the Supreme Court of Spain
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Geographical Indications; Enforcement of IP and
Related Laws
Plaintiff: Fundación Consejo Regulador de la Denominación de Origen
protegida Queso Manchego
Defendant: Industrial Quesera Cuquerella SL and Juan Ramón Cuquerella
Montagud
Keywords: Geographical area, Figurative signs, Protected
designation of origin, Unlawful evocation
Basic facts: Industrial Quesera Cuquerella SL markets
three of its cheeses using labels with an illustration of a knight similar to the usual depictions of Don Quijote de La Mancha, i.e., a bony horse and landscapes
with windmills and sheep, as well as the words ‘Quesos
Rocinante’ (‘Rocinante cheeses’).
Those images and the word ‘Rocinante’
refer to the novel Don Quijote de La Mancha,
written by Miguel de Cervantes, ‘Rocinante’ being the name of the horse ridden
by Don Quijote.
The cheeses in question are not covered by
the protected designation of origin (PDO) ‘queso manchego’,
which covers cheeses made in the region of La Mancha (Spain) from sheep’s milk
in accordance with the requirements of the product specification of that PDO.
The
Fundación Consejo Regulador de la Denominación de Origen Protegida Queso
Manchego is responsible for managing and protecting the ‘queso manchego’
PDO.
On that basis, the Fundación Consejo
Regulador brought an action against Industrial Quesera Cuquerella SL and Mr.
Juan Ramón Cuquerella Montagud,
seeking a declaration that the labels used to identify and market the three
contested cheeses, as well as the use of the aforementioned
words, infringe the PDO at issue.
The Spanish courts of first and second instance held that the signs and
names used by Industrial Quesera Cuquerella
SL to market those cheeses evoke the region of La Mancha, but not necessarily
the cheese ‘queso manchego’ covered by the PDO.
The case was appealed to the Spanish Supreme
Court, which asked the Court of Justice of the European Union for a preliminary
ruling on, first, whether a registered name may be evoked through the use of
figurative signs; and, second, on whether the use of such signs evoking the
geographical area with which a PDO is associated may constitute evocation of
that designation, including where such figurative signs are used by a producer
established in that region, but whose products are not covered by the PDO.
The Court of Justice of the European Union, in its
Decision of May 2, 2019, held that a registered name may be evoked through the use of figurative signs. The Court noted
that the regulation provides that registered names must be protected against
‘any evocation’ and that the use of the word ‘any’ reflects the intention to
protect registered names, as evocation is deemed possible through
the use of a word element or figurative element. The decisive
question is whether that word or figurative element is capable of triggering
directly in the consumer’s mind the image of the product whose designation is
protected.
Held: In its Judgment
of July 18, 2019, the Civil Bench of the Supreme Court of Spain found the
defendants to have infringed the ‘queso manchego’
protected designation of origin.
Relevant holdings in relation to emerging issues in geographical
indications [specifically, unlawful evocation]: The
Supreme Court of Spain held that (i)
a registered name may be evoked through the use of
figurative signs, and (ii) the use of such signs evoking the geographical area
with which a PDO is associated may constitute evocation of that designation.
Relevant legislation:
Article 13 and 14, Regulation (EC) No 510/2006