Background
The plaintiff is the Consorzio del Prosciutto di Parma, an association of Italian producers of Parma ham, whose objective is to preserve, protect and promote the designation of origin "Prosciutto di Parma". Appropriately designated pre-packaged goods are exported to Germany in considerable quantities. In the years 2013 to 2015, more than 70 million packs of ham were sold annually in Germany under the designation "Prosciutto di Parma".
The defendant is a manufacturer of meat and sausage products established in the Italian province of Parma and markets sliced raw ham under the designation "Culatello di Parma" in Germany.
According to the plaintiff, the use of "Culatello di Parma" constitutes an unlawful evocation of the protected designation of origin "Prosciutto di Parma". It therefore brought an action before the District Court of Cologne, which upheld the action. The defendant's appeal against the first instance decision was unsuccessful. With the appeal on points of law allowed by the Court of Appeal, the defendant continued to pursue its motion to dismiss the action.
Decision
The defendant's appeal on points of law was unsuccessful. According to the GFSC, the Court of Appeal rightly held that the contested use of the designation "Culatello di Parma" constituted an inadmissible evocation of the designation "Prosciutto di Parma" protected for the plaintiff.
First of all, with reference to the rulings of the CJEU in the cases "Glen Buchenbach" and "Queso Manchego", the GFSC clarifies that the decisive criterion for the definition of the term "allusion" within the meaning of art. 13 (1.1) lit. b) of the EU Regulation No. 1151/2012 on quality schemes for agricultural products and foodstuffs (Quality Schemes Regulation) is whether a disputed name induces the consumer to make a direct association with the product bearing the protected designation of origin or the protected geographical indication. However, an association of some kind is not sufficient for the assumption of such an "allusion".
Furthermore, an "allusion" pursuant to the wording of art. 13 (1.1) lit. b) of the Quality Schemes Regulation may exist even if the true origin of the product is indicated. In addition, the defendant cannot successfully rely on the existence of a protected geographical indication "Coppa di Parma". According to the GFSC, it is irrelevant that there are other examples of registered geographical indications of origin based on the model "product of locality" which indicate that the relevant products come from the same place. Unlike "Coppa di Parma", "Culatello di Parma" is not, for whatever reason, protected as a geographical indication or designation of origin.
The defendant neither should be allowed to continue using the contested designation in parallel with the protected designation "Prosciutto di Parma" on the basis that "Culatello di Parma" is an unregistered traditional geographical name. While some in such cases advocate an analogous application of art. 6 (3) of the Quality Schemes Regulation, which under certain conditions allows the coexistence of a subsequently registered name with a wholly or partly identical name, the GFSC agreed with the Court of Appeal's findings that "Culatello di Parma" is not a traditional geographical name for the specialty ham produced by the defendant. Only the generic term "Culatello" has acquired reputation, which in any event can also be related to "Culatello" from the Zibello region. In this context, the designation of origin also enjoys protection.
The GFSC also explains that the plaintiff does not dispute the defendant's right to use the traditional name "Culatello" for its product so that the defendant remains entitled to market the product under that name.
Conclusion
The decision of the GFSC largely corresponds to the view of the CJEU in the cases "Glen Buchenbach" and "Queso Manchego" to which the judgment refers several times. This is good news for manufacturers of products with protected designations of origin. In fact, for manufacturers or suppliers who intend to lean on protected geographical designations with their product designations, the legal risk is increasing noticeably as a result of the latest decisions by both courts.
Authored by Patrick Fromlowitz and Nikolaus von Bargen
