The Court of Justice holds that the free movement of goods must not prevent Member States from protecting designations of origin. Responsibility rests with the national courts as to the implications for trade marks registered before a designation was granted such protection.
The designation "Gorgonzola" has been protected in Austria since 1951 under international conventions and since 1996 under Community law in accordance with the regulation concerning the registration of geographical indications and designations of origin.
Since 1983 a soft cheese manufactured in Germany has been sold in Austria under the trade mark "Cambozola".
The Consorzio per la Tutela del Formaggio Gorgonzola (Consortium for the protection of Gorgonzola cheese) applied to the Handelsgericht Wien (Commercial Court, Vienna) for an order prohibiting the marketing of the cheese in Austria under that name. The Austrian court referred to the Court of Justice for a preliminary ruling as to whether such a measure could be adopted without infringing the Community rules on the free movement of goods, in the light of Austria's accession to the European Union.
The Court points out first that Community law guarantees that designations of origin will be protected against all "evocations". The concept of evocation covers the situation where the term used to indicate a product reproduces part of a protected designation and has the same number of syllables, so that, because of that resemblance, when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected.
The Court concludes therefore that the term "Cambozola", used for a cheese, may be regarded as an evocation of the designation "Gorgonzola".
However, the Court observes that it is for the national court to determine whether the requisite conditions are satisfied for allowing use of the trade mark "Cambozola" to continue, despite the fact that it is an evocation and as such in principle prohibited.
That trade mark was registered before the entry into force of the Community protection of the designation "Gorgonzola". If its use is to be allowed to continue, its initial registration must have been made in good faith and its use must not be liable to deceive the public.
The Court maintains that the application of those criteria falls outside its jurisdiction. However, it points out that the fact that there is an evocation does not necessarily mean that the public is likely to be deceived.
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