Manchego Cheese: is the presence of windmills, Rocinante and a knight evocative?

“Somewhere in La Mancha, in a place whose name I do not care to remember…” there was a cheese protected by a specific geographical indication which is an intellectual property right for specific products, whose qualities are specifically linked to the area of production.

Depending on how much of the product’s raw materials must come from the area or how much of the production process has to take place within the specific region, there are two different protections: Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI).

In the case at hand, Queso Manchego is a PDO which covers cheeses made in the region of La Mancha, (Spain). The cheese is made from sheep’s milk of ewes of the ‘Manchega’ breed.

The Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego (‘the Queso Manchego Foundation’) is the foundation responsible for managing the Protected Designation of Origin Queso Manchego. On that basis, it brought an action against Industrial Quesera Cuquerella SL (‘IQC’) who was marketing three cheeses named “Adarga de Oro”, “Super Rocinante” and “Rocinante” seeking a declaration that the labels used to identify and market those three cheeses, which are not covered by the PDO ‘queso manchego’, as well as the use of the words referred to, infringe the PDO at issue. The Foundation takes the view that those labels and those words constitute an unlawful evocation of that PDO.

The labels of those three cheeses used by IQC contained illustrations of a knight similar to the usual depictions of Don Quixote de La Mancha, a bony horse and landscapes with windmills and sheep, as well as the words ‘Quesos Rocinante’ (‘Rocinante cheeses’). Those images and the word ‘Rocinante’ refer to the novel Don Quixote de La Mancha written by the Spanish author Miguel de Cervantes in 1605, ‘Rocinante’ being the name of the horse ridden by Don Quixote.

The Spanish Court of first instance (Juzgado de lo Mercantil de Albacete) and second instance (Audiencia Provincial de Albacete) dismissed the action on the ground that the signs and names used by IQC were not visually or phonetically similar to the PDOs ‘queso manchego’ and that the use of signs such as the name ‘Rocinante’ or the image of the literary character Don Quixote de La Mancha evoke the region of La Mancha (Spain) and not the cheese covered by the PDO ‘queso manchego’.

Finally the case reached the Spanish Supreme Court (Tribunal Supremo) who decided to stay the proceedings and to refer to the Court of Justice for a preliminary ruling the following questions:

1. whether a registered name may be evoked through the use of figurative signs;
2. whether the use of such signs evoking the geographical area with which a PDO is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products are not covered by the PDO;
3. and whether the concept of average consumer who is reasonably well informed and reasonably observant and circumspect covers the European consumer or only consumers of the Member State in which the product giving rise to evocation.

Regarding the first question, the CJEU held that the decisive criterion for establishing whether an element evokes a registered denomination is whether that element is capable of triggering directly in the consumer’s mind the image of the product whose designation is protected.

The link established by the consumer has to be sufficiently direct and univocal so that the vision of these elements mainly brings the referred denomination to the mind of the consumer.

Regarding the second question, the CJEU establishes that the use of figurative signs that evoke the geographical area to which a PDO is linked may constitute a prohibited evocation even in the case that said figurative signs are used by an established producer in the same region but whose products are not covered by the PDO.

Thirdly, the concept must be understood as covering European consumers, including consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed.

Notwithstanding the conclusion reached by the CJEU, it is finally the Spanish Supreme Court that has the final decision and on 18 July 2019 it ruled following the CJEU that the labelling used by IQC to identify and market the cheeses “Adarga de oro”, “Super Rocinante” and “Rocinante” constituted an infringement of the Protected Designation of Origin “queso manchego”.