JUDGMENT OF THE COURT

9 June 1998 (1)

(Regulation (EEC) No 2081/92 on the protection of geographical indicationsand designations of origin for agricultural products and foodstuffs — Exclusivecompetence of the Commission — Scope of the protection of names comprisingseveral terms)

In Joined Cases C-129/97 and C-130/97,

REFERENCE to the Court under Article 177 of the EC Treaty by the Tribunalde Grande Instance, Dijon, France, for a preliminary ruling in the criminalproceedings pending before that court against

Yvon Chiciak and Fromagerie Chiciak (C-129/97),

Jean-Pierre Fol (C-130/97),

Third parties:     Syndicat de Défense de l'Époisses (C-129/97 and C-130/97),

            Institut National des Appellations d'Origine Contrôlées (INAO)            (C-129/97 and C-130/97),

            Association Nationale d'Appellation d'Origine Laitière Française            (ANAOF) (C-129/97 and C-130/97),

            Laiterie de la Côte SARL and Others (C-130/97),

on the interpretation of Council Regulation (EEC) No 2081/92 of 14 July 1992 onthe protection of geographical indications and designations of origin for agriculturalproducts and foodstuffs (OJ 1992 L 208, p. 1) and Commission Regulation (EC)No 1107/96 of 12 June 1996 on the registration of geographical indications anddesignations of origin under the procedure laid down in Article 17 of RegulationNo 2081/92 (OJ 1996 L 148, p. 1),

THE COURT,

composed of: G.C. Rodríguez Iglesias, President, C. Gulmann (Rapporteur),H. Ragnemalm and M. Wathelet (Presidents of Chambers), J.C. Moitinho deAlmeida, P.J.G. Kapteyn, J.L. Murray, J.-P. Puissochet, G. Hirsch, P. Jann andL. Sevón, Judges,

Advocate General: A. La Pergola,

Registrar: L. Hewlett, Administrator,

after considering the written observations submitted on behalf of:,

—    Syndicat de Défense de l'Époisses, by Daniel Bouchard, of the Dijon Bar,

—    Mr Chiciak, Fromagerie Chiciak and Mr Fol, by Corinne Linval, of theAube Bar,

—    the French Government, by Kareen Rispal-Bellanger, Assistant Director inthe Legal Affairs Directorate of the Ministry of Foreign Affairs, andFrédéric Pascal, Central Administrative Attaché in the same directorate,acting as Agents,

—    the Italian Government, by Professor Umberto Leanza, Head of theContentious Diplomatic Affairs Department of the Ministry of ForeignAffairs, acting as Agent, assisted by Ivo Braguglia, Avvocato dello Stato,

—    the Commission of the European Communities, by José Luis IglesiasBuhigues, Legal Adviser, and Xavier Lewis, of its Legal Service, acting asAgents,

having regard to the Report for the Hearing,

after hearing the oral observations of Syndicat de Défense de l'Époisses,represented by Daniel Bouchard; of Mr Chiciak, Fromagerie Chiciak and Mr Fol,represented by Corinne Linval; of the French Government, represented by

Christina Vasak, Assistant Secretary for Foreign Affairs in the Legal AffairsDirectorate of the Ministry of Foreign Affairs, acting as Agent, and Frédéric Pascal;of the German Government, represented by Corinna Ullrich, Regierungsrätin in theFederal Ministry of Justice, acting as Agent; of the Greek Government, representedby Ioanna Galani-Maragkoudaki, Assistant Special Legal Adviser in the SpecialDepartment for Community Affairs of the Ministry of Foreign Affairs, and IoannisChalkias, Assistant Legal Adviser in the State Legal Council, acting as Agents; ofthe Italian Government, represented by Ivo M. Braguglia; and of the Commission,represented by José Luis Iglesias Buhigues and Xavier Lewis, at the hearing on 27January 1998,

after hearing the Opinion of the Advocate General at the sitting on 12 March 1998,

gives the following

Judgment

1.

    By judgments of 26 February 1997, received at the Court on 1 April 1997, theTribunal de Grande Instance (Regional Court), Dijon, referred to the Court for apreliminary ruling under Article 177 of the EC Treaty two questions on theinterpretation of Council Regulation (EEC) No 2081/92 of 14 July 1992 on theprotection of geographical indications and designations of origin for agriculturalproducts and foodstuffs (OJ 1992 L 208, p. 1, hereinafter 'the 1992 regulation‘),and Commission Regulation (EC) No 1107/96 of 12 June 1996 on the registrationof geographical indications and designations of origin under the procedure laiddown in Article 17 of Regulation No 2081/92 (OJ 1996 L 148, p. 1, hereinafter 'the1996 regulation‘).

2.

    Those questions were raised in criminal proceedings brought against Mr Chiciakand Mr Fol for having marketed cheese using a protected designation of origin inbreach of the applicable national rules.

3.

    The 1992 regulation, which entered into force on 25 July 1993, lays down the rulesrelating to the protection of designations of origin and geographical indications ofagricultural products intended for human consumption and of foodstuffs. Theseventh recital in the preamble to the regulation states that '... there is diversity inthe national practices for implementing registered designations of origin andgeographical indications; ... a Community approach should be envisaged; ... aframework of Community rules on protection will permit the development ofgeographical indications and designations of origin since, by providing a moreuniform approach, such a framework will ensure fair competition between theproducers of products bearing such indications and enhance the credibility of the

products in the consumers' eyes‘. The twelth recital states that '... to enjoyprotection in every Member State geographical indications and designations oforigin must be registered at Community level ...‘.

4.

    Article 2(2)(a) of the 1992 regulation provides:

'For the purposes of this Regulation:

(a)    designation of origin: means the name of a region, a specific place or, inexceptional cases, a country, used to describe an agricultural product or afoodstuff:

    —    originating in that region, specific place or country, and

    —    the quality or characteristics of which are essentially or exclusively dueto a particular geographical environment with its inherent natural andhuman factors, and the production, processing and preparation ofwhich take place in the defined geographical area.‘

5.

    Articles 4 to 7 of that regulation lay down a registration procedure (called the'normal‘ procedure).

6.

    Article 4(1) of the 1992 regulation provides that '[t]o be eligible to use a protecteddesignation of origin (PDO) or a protected geographical indication (PGI) anagricultural product or foodstuff must comply with a specification‘. It follows fromparagraph 2 of that article that the product specification is to include, in particular,'the name of the ... product ... including the designation of origin or thegeographical indication‘.

7.

    According to Article 5(4) of the 1992 regulation, the application for registrationmust be sent to the Member State in which the geographical area is located.According to Article 5(5), the Member State is to check that the application isjustified and is to forward it to the Commission together with, inter alia, the productspecification. According to Article 6(1), (2) and (3), within a period of six monthsthe Commission is to verify, by means of a formal investigation, whether theregistration application includes all the particulars provided for in Article 4. If theCommission concludes that the name qualifies for protection, it is to publish anotice in the Official Journal of the European Communities. If no statement ofobjection by a Member State or by a natural or legal person concerned is notifiedto it in accordance with Article 7, the Commission is to enter the name in a registerentitled 'Register of protected designations of origin and protected geographicalindications‘.

8.

    According to Article 8 of the 1992 regulation, the indications 'PDO‘ and 'PGI‘may appear only on agricultural products and foodstuffs that comply with thatregulation.

9.

    Article 9 of the 1992 regulation provides:

'The Member State concerned may request the amendment of a specification, inparticular to take account of developments in scientific and technical knowledge orto redefine the geographical area.

The Article 6 procedure shall apply mutatis mutandis.

The Commission may, however, decide, under the procedure laid down in Article15, not to apply the Article 6 procedure in the case of a minor amendment.‘

10.

    Article 13(1) of the 1992 regulation provides:

'Registered names shall be protected against:

(a)    any direct or indirect commercial use of a name registered in respect ofproducts not covered by the registration in so far as those products arecomparable to the products registered under that name or insofar as usingthe name exploits the reputation of the protected name;

(b)    any misuse, imitation or evocation, even if the true origin of the product isindicated or if the protected name is translated or accompanied by anexpression such as ”style”, ”type”, ”method”, ”as produced in”, ”imitation”or similar;

(c)    any other false or misleading indication as to the provenance, origin, natureor essential qualities of the product, on the inner or outer packaging,advertising material or documents relating to the product concerned, andthe packing of the product in a container liable to convey a false impressionas to its origin;

(d)    any other practice liable to mislead the public as to the true origin of theproduct.

Where a registered name contains within it the name of an agricultural product orfoodstuff which is considered generic, the use of that generic name on theappropriate agricultural product or foodstuff shall not be considered to be contraryto (a) or (b) in the first subparagraph.‘

11.

    Article 17 of the 1992 regulation, which sets out the so-called 'simplified‘registration procedure and concerns the registration of names already in existenceon the date on which that regulation entered into force, provides:

'1.    Within six months of the entry into force of the Regulation, Member Statesshall inform the Commission which of their legally protected names or, in

those Member States where there is no protection system, which of theirnames established by usage they wish to register pursuant to this Regulation.

2.    In accordance with the procedure laid down in Article 15, the Commissionshall register the names referred to in paragraph 1 which comply withArticles 2 and 4. Article 7 shall not apply. However, generic names shall notbe added.

3.    Member States may maintain national protection of the namescommunicated in accordance with paragraph 1 until such time as a decisionon registration has been taken.‘

12.

    The annex to the 1996 regulation lists the names registered as protectedgeographical indications (PGI) or protected designations of origin (PDO) pursuantto Article 17 of the 1992 regulation. They include 'Époisses de Bourgogne (PDO)‘.

13.

    The 1992 regulation was amended by Council Regulation (EC) No 535/97 of 17March 1997 (OJ 1997 L 83, p. 3, hereinafter 'the 1997 regulation‘) which, inparticular, inserted the following text into Article 5(5), after the first subparagraph:

'That Member State may, on a transitional basis only, grant on the national levela protection in the sense of the present Regulation to the name forwarded in themanner prescribed, and, where appropriate, an adjustment period, as from the dateof such forwarding; these may also be granted transitionally subject to the sameconditions in connection with an application for the amendment of the productspecification.

Such transitional national protection shall cease on the date on which a decisionon registration under this Regulation is taken. ...

...

The measures taken by Member States under the second subparagraph shallproduce effects at national level only; they shall have no effect on intra-Communitytrade.‘

14.

    The French Decree of 14 May 1991 concerning the designation of origin 'Époissesde Bourgogne‘ (JORF, p. 6593, hereinafter 'the 1991 decree‘) introduced thatdesignation and defined the cheeses eligible to use it. The French Governmentapplied for registration of that designation in accordance with the simplifiedprocedure under Article 17 of the 1992 regulation and the Commission proceededto register it within the framework of the 1996 regulation.

15.

    The 1991 decree was amended by the decree of 14 April 1995 concerning theregistered designation of origin 'Époisses‘ (JORF, p. 6271, hereinafter 'the 1995decree‘), and the name 'Époisses de Bourgogne‘ was replaced by 'Époisses‘

throughout. The French Government stated in its observations that by letter dated25 April 1997 it had requested the Commission to amend the product specificationfor the protected designation of origin 'Époisses de Bourgogne‘ in accordance withArticle 9 of the 1992 regulation.

16.

    Mr Chiciak and Mr Fol are cheese makers who are being prosecuted for having'used the name ”Époisses”, a protected designation of origin created by the 1995decree, which is reserved to cheeses whose characteristics are defined in the 1991decree concerning the designation of origin ”Époisses de Bourgogne”‘. Thedefendants did not deny that the products manufactured by them failed to complywith the requirements laid down by the 1995 decree. They submitted however thatthey were legally entitled to use the name 'Époisses‘ for their cheeses, on theground that the 1995 decree was contrary to the 1992 regulation. They submittedthat that regulation reserves to the Commission exclusive power to grant protectionto designations of origin and prohibits the Member States from legislating in thatfield. They pointed out that they had not infringed the 1991 decree and that thename registered in the 1996 regulation in accordance with the French authorities'request was 'Époisses de Bourgogne‘ and not 'Époisses‘.

17.

    The Syndicat de Défense de l'Époisses and the Association Nationale d'Appellationd'Origine Laitière Française challenged the argument that the 1995 decree wasunlawful. They claimed that the term 'Époisses‘ was protected on the same footingas the term 'Époisses de Bourgogne‘. In that respect, they referred in particularto the 1996 regulation, the annex to which lists the products registered withprotected designation of origin. It includes, inter alia: Époisses de Bourgogne,Camembert de Normandie, and Chabichou du Poitou. As regards the two lattercheeses, taken by way of example, a footnote expressly specifies that protection ofthe terms 'chabichou‘ and 'camembert‘ is not sought. It therefore followed, theyargued, from an a contrario interpretation of the absence of any express provisionin that respect, that the 'Époisses‘ part of the designation 'Époisses deBourgogne‘ was protected as such.

18.

    In those circumstances, the national court decided to stay proceedings and to referthe following questions to the Court for a preliminary ruling:

'1.    Does Regulation No 2081/92 of 14 July 1992 preclude, as from its entry intoforce, any residual power on the part of the Member States to alter a pre-existing designation of origin?

2.    Do the particulars given in the form of footnotes to the annex to RegulationNo 1107/96 of 12 June 1996 constitute an exhaustive list of the unprotectedparts of names made up of several terms?‘

19.

    By order of the President of the Court of 10 April 1997, these two cases werejoined for the purposes of the written procedure, the oral procedure and thejudgment.

The first question

20.

    By its first question, the national court is essentially asking whether the 1992regulation is to be interpreted as meaning that, after its entry into force, a MemberState may, by adopting provisions of national law, alter a designation of origin inrespect of which it has requested registration in accordance with Article 17 andprotect that designation at national level.

21.

    Mr Chiciak and Mr Fol, the Greek Government and the Commission submit thatthe 1992 regulation is exclusive in scope, which means that, since its entry intoforce, it precludes any power on the part of the Member States to create a newgeographical name or to alter any name which has been registered in accordancewith that regulation.

22.

    The Italian and German Governments submit that the 1992 regulation is intendedto provide effective protection at Community level. That purpose is not, however,inconsistent with national legislation of a complementary nature which confers morelimited protection nor does it preclude such legislation.

23.

    The French Government, supported by the Syndicat de Défense de l'Époisses,submits that the 1992 regulation is intended to ensure protection for designationsof origin at Community level without depriving the Member States of their poweras regards the operation of those designations. It submits in particular that,although the 1997 regulation now expressly provides that national protection ofnames may be maintained until they are registered at Community level, thenational authorities necessarily had such a power as soon as the 1992 regulationentered into force. Each Member State is therefore entitled to protect certainelements of names pending conclusion of the Community registration procedure.

24.

    In that respect, as the Advocate General has pointed out at point 4 of his Opinion,it is sufficient to consider whether a Member State which, in accordance withArticle 17 of the 1992 regulation, requested registration of a designation of originwhich was protected when that regulation entered into force, has power to alterthat designation without observing the procedure laid down for that purpose by theregulation.

25.

    According to the seventh and twelth recitals in its preamble, the 1992 regulationis intended to ensure uniform protection within the Community of geographicalnames which comply with it. Furthermore, that uniform protection results fromregistration carried out in accordance with the rules specifically laid down by theregulation.

26.

    The 1992 regulation introduced the requirement for geographical names to beregistered at Community level in order to enjoy protection in every Member Stateand defined the Community framework which was thenceforth to govern thatprotection, which is obtained only at the end of a compulsory notification,verification and registration procedure.

27.

    Within the time-limit of six months prescribed by the 1992 regulation, the Frenchauthorities requested registration of the designation of origin 'Époisses deBourgogne‘, which was protected pursuant to the 1991 decree, under the'simplified‘ procedure laid down in Article 17 of the aforesaid regulation, whichmeans inter alia that the registration was effected without the objections stageprescribed by Article 7 of the 1992 regulation in the context of the 'normal‘registration procedure.

28.

    A Member State which has used the registration procedure laid down in Article 17may, pursuant to Article 17(3), maintain national protection of the name inquestion until such time as a decision on registration has been taken.

29.

    It is implicit in the uniform protection of designations of origin which wasintroduced by the 1992 regulation that a Member State which considers itappropriate for an alteration to be made to the designation of origin for whichregistration has been requested in accordance with the regulation should complywith the procedures established for that purpose.

30.

    Any alteration of an element of the product specification, such as the name of theproduct, that is to say the registered designation of origin, can therefore beprocured only within the framework of the Community arrangements andprocedures laid down by the 1992 regulation and, in particular, in compliance withthe procedure laid down in Article 9 of the regulation, which refers to the Article6 procedure.

31.

    The French Government claims that, according to the scheme of the regulation,Member States must be afforded the possibility of granting provisional nationalprotection, at least until such time as a decision has been taken on the request forregistration. It maintains that its view is supported by the new provision which wasinserted into Article 5 of the 1992 regulation by the 1997 regulation and whichintroduces the possibility for a Member State which has requested registration togrant 'on a national level, a protection in the sense of the present Regulation tothe name forwarded‘; that protection may also be granted 'in connection with anapplication for the amendment of the product specification‘.

32.

    In that respect, it must be held, while pointing out that the new provision insertedinto Article 5 of the 1992 regulation by the 1997 regulation does not apply to theregistration procedure laid down in Article 17, that before the 1997 regulationentered into force there was no basis in the 1992 regulation for a power such as

that relied upon by the French Government. Contrary to that government'sassertion, it is clear from the 1997 regulation itself that, under the systemintroduced by the 1992 regulation, where Member States have the power to adoptdecisions, even of a provisional nature, which derogate from the provisions of theregulation, that power is derived from express rules.

33.

    The answer to the first question must therefore be that the 1992 regulation mustbe interpreted as meaning that, since its entry into force, a Member State may not,by adopting provisions of national law, alter a designation of origin for which it hasrequested registration in accordance with Article 17 and protect that designationat national level.

The second question

34.

    In view of the context in which the second question is raised and having regard tothe explanations given by the national court, that question is essentially askingwhether, in the case of a 'compound‘ designation of origin, the fact that there isno footnote in the annex to the 1996 regulation specifying that registration is notsought for one of the parts of that designation means that each of its parts isprotected.

35.

    In that respect, the French Government and the Commission essentially submitthat, as regards compound names, the general rule resulting from Article 13 of the1992 regulation is that, provided that a generic or common term is not involved, theprotection applies not only to the name as a whole, but also to each of its terms.In their submission, if, as regards compound names, only the name as a whole wereprotected, the result would be that the level of protection specified in Article 13 ofthe 1992 regulation could not be fully ensured. When the 1996 regulation wasunder consideration, the principle was laid down that unprotected terms incompound names had to be expressly specified. That specification does notprejudge whether or not the part of the name concerned is generic. In the presentcase, the absence of any footnote means that the protection covers not only thename as a whole, but also each of its constituent terms.

36.

    That argument cannot be accepted. Even though it was considered necessary in the1996 regulation to specify in a certain number of cases, by means of footnotes, thatprotection of part of the name in question was not sought, the inference to bedrawn from this is that the persons concerned cannot assert rights under the 1992regulation in respect of that part of the name. Furthermore, there is nothing in the1996 regulation to indicate the reasons for which the Member States decided notto seek protection, whether because the part had become generic, because the partin question was not protected at national level at the time when the application wasmade pursuant to Article 17 of the 1992 regulation or for other reasons. The eighthrecital in the preamble to the 1996 regulation merely states that 'certain Member

States have made it known that protection was not requested for some parts ofdesignations and this should be taken into account‘.

37.

    Even if it may prove to be the case that it follows from Article 13 of the 1992regulation that, in the absence of specific circumstances pointing to the contrary,the protection afforded by that provision covers not only the compound designationas a whole, but also each of its constituent parts, provided they are not generic orcommon terms, that provision cannot constitute a sufficient basis for interpretingthe 1996 regulation as meaning that, in the absence of a footnote, each constituentpart of the compound name is protected.

38.

    There is nothing in the 1996 regulation — adopted by the Commission according tothe committee procedure laid down in Article 15 of the 1992 regulation — to suggestthat the use of the system of footnotes had such a purpose. Furthermore, under thesystem of protection created by the 1992 regulation questions concerning theprotection to be accorded to the various constituent parts of a name, and, inparticular, the question whether a generic name or a constituent part protectedagainst the practices referred to in Article 13 of the 1992 regulation may beconcerned, are matters which fall for determination by the national court on thebasis of a detailed analysis of the facts presented before it by the parties concerned.

39.

    The answer to the second question must therefore be that, as regards a'compound‘ designation of origin, the fact that there is no footnote in the annexto the 1996 regulation specifying that registration is not sought for one of the partsof that designation does not necessarily mean that each of its parts is protected.

Costs

40.

    The costs incurred by the French, German, Greek and Italian Governments, andby the Commission of the European Communities, which have submittedobservations to the Court, are not recoverable. Since these proceedings are, for theparties to the main proceedings, a step in the action pending before the nationalcourt, the decision on costs is a matter for that court.

On those grounds,

THE COURT,

in answer to the questions referred to it by the Tribunal de Grande Instance deDijon by judgments of 26 February 1997, hereby rules:

1.    Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection ofgeographical indications and designations of origin for agriculturalproducts and foodstuffs must be interpreted as meaning that, since its entryinto force, a Member State may not, by adopting provisions of nationallaws, alter a designation of origin for which it has requested registration inaccordance with Article 17 and protect that designation at national level.

2.    As regards a 'compound‘ designation of origin, the fact that there is nofootnote in the annex to Commission Regulation (EC) No 1107/96 of 12June 1996 on the registration of geographical indications and designationsof origin under the procedure laid down in Article 17 of Regulation No2081/92 specifying that registration is not sought for one of the parts of thatdesignation does not necessarily mean that each of its constituent parts isprotected.

Rodríguez IglesiasGulmann Ragnemalm Wathelet Moitinho de Almeida Kapteyn Murray Puissochet Hirsch Jann Sevón

Delivered in open court in Luxembourg on 9 June 1998.

R. Grass

G.C. Rodríguez Iglesias

Registrar

President

1: Language of the case: French.