Hard Cheese for Imitators of Products with Protected Designation of Origin

Author:Mr Paul England
Profession:Herbert Smith

Today, the European Court of Justice (ECJ)

ruled against Dante Bigi in the "Parmesan cheese" case regarding his use

of a name protected by the Protected Designation of Origin ("PDO") for

"Parmigiano Reggiano".

The law at issue

Council Regulation (EC) No 2081/92 on the

Protection of Designations of Origin established a system for the

registration of PDOs, i.e. the name of a region or geographical area used

to describe a product from that area which possesses a special quality or

distinction attributable to the characteristics, both natural and human,

of that area.

Once registered, the PDO is protected against misleading use,

application and imitation.

The facts of the case

In 1996, the Italian Republic applied

for a Community PDO registration of "Parmigiano Reggiano" (translated as

"Parmesan") under the simplified registration procedure of Art 17 of the

Regulation for names already protected by national law or established by

use. Parmesan comes from the town of Parma and its environs, the qualities

of the cheese deriving from the characteristics of that specific area.

Dante Bigi had been producing in Italy a dried, powdered cheese made

from a mixture of several cheeses of different origin, none of which were

Parmigiano Reggiano according to the PDO registration, but sold under

labels clearly marked "Parmesan".

Importantly, the cheese was intended for export exclusively to Member

States other than Italy.

In 1999 consignments of the cheese were seized and criminal proceedings

brought against Bigi for fraudulently trading and selling cheese with

misleading labels.

Bigi sought to argue a defence under the transitional exemption in Art

13(2) of the Regulation. This article allows Member States to continue

national systems permitting the marketing of products that do not comply

with PDOs, but for no more than five years. Bigi claimed that since his

cheese was intended for the markets of Member States in which the cheese

was lawful it was covered by the derogation.

The ECJ Decision

The principal question the ECJ was asked to

consider was whether the transitional exemption under Art 13(2) could be

applied to products which do not comply with a PDO and originate in the

Member State which obtained the registration of that PDO, but are then

exported exclusively to Member States where they are lawful according to

national laws.

In its decision, the ECJ says that the derogation of Art 13(2) is there

to provide an adjustment period for producers who...

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