Intellectual Property Update: Celebrations for Aldi as Use of ‘Champagne’ Sorbet Product Allowed
28 March 2018
Designation of Origin
A designation of origin is the name of a region or specific place used to describe a product. Only products which meet the geographical and quality criteria may use a protected designation of origin. The quality and characteristics of the product must be due to the particular geographic environment and the production of the product must take place in that geographical area. Well-known examples include feta, camembert and cognac. Champagne, which is relevant to this case, is also a protected designation of origin protected by EU law. Irish examples include Connemara Hill Lamb and Clare Island Salmon.
In 2012, Aldi began to sell a frozen product under the name ‘Champagner Sorbet’. It contained 12% champagne. The CIVC, an association of champagne producers, brought injunction proceedings against Aldi in Germany to prevent the use ‘champagne’ in relation to the product.
Aldi argued that it had a legitimate interest in using the name ‘Champagner Sorbet’ to refer to a food product known to the public under that name and in which champagne was an essential ingredient. In other words, it was being used in a descriptive sense by reference to the ingredients of the product. Aldi claimed that there was no misleading indication. The Higher Regional Court in Munich agreed and CIVC appealed the decision to the German Federal Court of Justice.
In short, CIVA argued that Aldi was using the protected designation of origin for a frozen dessert which did not correspond to the criteria for use of the protected designation of origin under EU law.
The German Federal Court of Justice referred a number of questions to the CJEU which can be summarised as follows:
- Are the EU provisions on protected designations of origin applicable to the use of a protected designation of origin as part of a product name where that product itself does not correspond to the criteria for the protected designation of origin but contains an ingredient which corresponds with the criteria?
- If yes, does the use constitute exploitation of the protected designation of origin where the name corresponds to the name usually used by the relevant public to refer to that foodstuff and the ingredient has been added in a quantity which is sufficient to give the product one of its essential characteristics?
The CJEU ultimately found that the taste of the product was attributed primarily to the presence of champagne in its composition and, on that basis, it did not take unfair advantage of the reputation of the protected designation of origin. In summary, the use of the name ‘champagne’ in relation to the product did not amount to misuse or imitation where champagne was an essential ingredient.
The case will now return before the German Federal Court of Justice.
This case is significant as it is the CJEU’s first ruling on the principles for the use of a protected designation of origin as part of the name of a product containing an ingredient over which the designation of origin is protected. It provides comfort to manufacturers seeking to refer to a protected designation of origin when marketing their products.
However, the guidance of the CJEU must be borne in mind in that the mere presence of a protected ingredient is unlikely to be sufficient to use the protected designation of origin. For example, in this case, the use was allowed on the basis that champagne was an essential ingredient and contributed significantly to the taste of the product.
For more information on the lawful use of protected designations of origin in food products, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.