172 GANGJEE: SAY CHEESE! A SHARPER IMAGE OF GENERIC USE THROUGH THE LENS OF FETA: [2007] E.I.P.R.

Say Cheese! A Sharper Image of Generic Use through the Lens of Feta

DEV GANGJEE
Dev Gangjee, London School of Economics

[Keywords to follow]

Introduction
In late 2005 the European Court of Justice (ECJ) served up its nal decision in the long-running Feta dispute,1 which had been ripening for close to two decades. The court upheld the European Commissions nding that Feta was not a commonly used or generic term for a type of white cheese in brine, instead designating cheese with a specic Greek origin. This Grand Chamber decision has controversial consequences as it restricts the use of Feta by existing producers outside Greece, who use it descriptively. Given its lengthy gestation and cross-border implications, Feta is an instructive lens through which to review the test for the generic use of Geographical Indications (GIs).2 Generic terms form part of the general cultural and gastronomic stock and may, in principle, be used by any producer.3 While establishing this status is a question of fact the level at which the threshold is set, the categories of admissible evidence and the hierarchy of their importance all
* The author is grateful to Dr Justine Pila and those who attended the Oxford Intellectual Property Centre Seminar (November 7, 2006) for helpful comments on a draft of this article. The usual caveat applies. 1 Federal Republic of Germany and Kingdom of Denmark v Commission of the European Communities (Joined Cases C465/02 and C466/02) [2006] E.T.M.R. 16 (Feta 2005). 2 Geographical indications are dened in Art.22.1 of TRIPs as indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. Examples drawn from the names of wines, spirits, agricultural products and foodstuffs include Bordeaux wine, Darjeeling tea and Havana tobacco. They function as valuable, collective brands in a manner similar to a trade mark. For an overview, see WIPO Secretariat, Document SCT/6/3 Rev. on Geographical Indications: Historical Background, Nature of Rights, Existing Systems for Protection and Obtaining Protection in Other Countries (SCT/8/4) April 2, 2002. Available at www.wipo.int (all references to online resources were veried as of February 17, 2007). 3 According to Advocate General Colomer in Canadane Cheese Trading AMBA and Adel G. Kouri Anonymos Emoriki Kai Viomichaniki Etaireia v Hellenic Republic (C317/95) [1997] E.C.R. I4681 at [28] (AG). (Canadene AG).

reect the competing interests at stake. What is more, the test for generic status says something about the coincidence (or otherwise) of producer and consumer interests under this regime. Are certain aspects of European GI law best understood from a purely producer protection viewpoint, rather than being based on consumer understanding? If so, can this be justied? The legal response to a genericide claim thus illuminates the normative commitments of a little understood, yet controversial area of intellectual property law.4 Feta is the rst dispute to address this issue under the pan-European registered GI regime.5 The outcome prompts questions about whether its resolution was a politically expedient instance of semantic reloading. Or is it the righting of historic injustice? In response, the rst section begins by reconstructing Fetas path through the courts which led up to the ECJ. This provides the backdrop to the analysis of the ECJs 1999 and 2005 decisions in the second section. The puzzle presented by this case is that there was a signicant volume of Feta production outside Greece for several decades, yet the court ultimately upheld the Commissions nding that the term was non-generic. The aim is to discover why this initially signicant evidentiary nding was subsequently overshadowed. The third section concludes by locating this dispute within the broader trajectory of debates concerning the generic use of GIs. When viewed against this backcloth, possible answers as to why the Commission and court reached the conclusions they did may be teased out. The author concludes by suggesting that Feta precipitates a broader and more honest inquiry into the extent to which the law is concerned with protecting producers independently of consumer perceptions.

The history of the Feta litigation

A GI is a sign indicating a products specic geographical origin and information associated with that origin. Legal protection rests on its ability to perform this function.6 Its use to designate a type of product, regardless of origin, is therefore fatal. Determining whether a GI or its closest conceptual kin, a trade mark, has slipped into
4 The controversy is most visible at the TRIPs Council, where GI negotiations have ground to a halt. See Chairmans Report, 15th Special Session for TRIPS, Report by Chairman, Ambassador Manzoor Ahmad TN/IP/15 (March 24, 2006) at para.5, where the chairman noted that on many issues Members were still far apart. See also Deadlock Persists on all GI Issues, BRIDGES Weekly Trade Digest Vol.10 (March 22, 2006). 5 The test is laid down in Art.3(1) of Council Regulation 2081/92 of July 14, 1992 on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs [1992] O.J. L208/1 (Regulation 2081/92). In light of a recent WTO Panel Ruling, several amendments have been carried out and it has arisen, phoenix-like, as the similarly titled Council Regulation 510/2006 of March 20, 2006 [2006] O.J. L93/12 (Regulation 510/2006). 6 e.g. see Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik [2001] E.T.M.R. 7 at 82 (Swiss Federal Court of Justice; February 15, 1999) The function both of trade mark protection and of protection for appellations of origin is to ensure the distinguishing function of the designation and to prevent mistaken attributionswhether regarding the manufacturer or the place of origin. But unlike trade marks, appellations of origin attribute the goods for which they are used not to a certain undertaking but to a country, a region or a place.

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generic usage7 is therefore a delicate evidentiary exercise and the competing interests were magnied here as the case sealed Fetas fate across the EU at one stroke. After a transition period only producers in designated parts of Greece, following specied production methods, will be entitled to use the term. Understandably, this is not to everyones taste and Hans Bender, director of the Danish Dairy Board, characterised the decision as legal nonsense and a big setback for non-Greek Feta producers in the EU.8 A producer of Yorkshire feta in the United Kingdom warned that prices may be forced up as Greece alone is unable to satisfy global demand.9 This contrasts with the sense of vindication in the Greek Agriculture Ministers reaction, suggesting that this right to exclusive use was hard earned and steeped in Greek cultural tradition.10 To navigate between these extremes, Feta considered whether the relevant public understands the term to be commonly used for a type of good, such as Dijon for mustard.11 The Scientic Committee,12 which advised the European Commission during the registration process, reasoned that since the product was cheese the relevant public should include consumers as well as commercial purchasers such as restaurants. The general public across all the Member States concerned was thus the target audience.13 Regarding the point at which the semantic scales would tip, Feta would be considered generic only when there is in the relevant territory no signicant part of the public concerned that still considers the indication as a geographical indication.14 This is a high threshold, designed to prevent an easy slide into genericide. When considering the relevant publics opinion for this test, any judicial snapshot of what this means is an articial process at the best of times. On a related note, one scholar observes that as the most intellectual of the intellectual properties, trademarks are a property purely of consumers minds.15 To open a window on to this impressionistic landscape, two categories of evidence were considered by the Commission and Court: (1) direct evidence (such as
7 Trade marks which have suffered this fate in the United States include aspirin, cellophane and escalator. See J. T. McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn, Westlaw edn 2006), Ch.12 at 12:1. 8 The EU Feta Debate Concludes, Managing Intellectual PropertyWeekly News, October 31, 2005. 9 Yorkshire Feta? Hard Cheese Says European Court, The Telegraph, October 26, 2005 www.telegraph.co.uk. This may be an exaggerated concern as producers in non-EU states are still at liberty to use the term generically. 10 Greece Hails Historic EU Ruling on its Staple Feta Cheese, EUBusinessFood and Drink, October 25, 2005, www.eubusiness.com. 11 The example suggested by WIPO in its answer to What is a generic geographical indication? at www.wipo.int. 12 A committee of experts established to assist the Commission with all technical matters relating to registration of GIs, including determining generic status. See Commission Decision of December 21, 1992 Setting Up a Scientic Committee for Designations of Origin, Geographical Indications and Certicates of Specic Character (93/53) [1993] O.J. L13/16. 13 Commission Regulation 1829/2002 of October 14, 2002 Amending the Annex to Regulation 1107/96 with Regard to the Name Feta [2002] O.J. L277/10 at Recital 23. 14 ibid. 15 B. Beebe, Search and Persuasion in Trademark Law (2005) 103 Michigan L. Rev. 2020 at p.2021.

consumer surveys), and (2) indirect evidence (such as production and consumption data). It is the relative importance given to each of these categories that proved controversial. In particular, did evidence of longstanding and signicant Feta production outside Greece reect a generic understanding of the term or was it merely opportunistic behaviour by external producers?16 Unravelling the answer to this requires familiarity with the history and distribution of Feta production in Europe.

The history of Feta production and regulation in Europe

Feta, or cheese very similar to it, has been produced in the region of Greece for a considerable period of time. Advocate General Colomer, in an opinion in the early Canadene litigation,17 somewhat hagiographically traced its origins to Homeric accounts of the Cyclops Polyphemus cheese production techniques.18 The term was derived from the Italian fetta or slice and its use gained acceptance in Greece in the 19th century to designate the traditional white cheese in brine, which has been made in almost the whole of Greece and other parts of the Balkans since time immemorial.19 This came to signify cheese made from sheeps milk or a mixture of sheeps and goats milk by the traditional craft method of natural straining of the milk, without applying pressure.20 Meanwhile regional variations within Greece emerged while appreciable Feta production also commenced from the 1960s onwards in Denmark, Germany, the Netherlands and France.21 Notably this cheese is usually made from more economical cows milk and by an industrial ultra-ltration process, which is cheaper than the traditional method of straining.22 The result is a product which is perceptibly dissimilar in taste and quality, yet bears the same name.23 Greece then established mandatory product specications in 198824 and Feta became a protected designation of origin under Greek law in 1994.25 This was followed by an application under EC Regulation 2081/92, which establishes a register of Protected Geographical Indications (PGIs) and Protected Designations of Origin (PDOs)26 at the Community level, in a manner similar to the
16 External is used through the course of this article to refer to producers based outside the GIs country of origin and not following product specication criteria. 17 Canadane AG, above fn.2. 18 ibid., [9]. Some may not see eye to eye with this assertion. 19 ibid., [14]. 20 The stages of coagulation, moulding, the addition of brine and ripening are also described; ibid., [15]. 21 Feta is also used generically and manufactured outside the EU, but the effect of these proceedings is limited to the Common Market. 22 Above fn.2, [17]. 23 C. MacMaolain Free Movement of Foodstuffs, Quality Requirements and Consumer Protection: Have the Court and the Commission Both Got it Wrong? [2001] European Law Review 413 at pp.424425. 24 Canadene AG, above fn.2, [3]. These were contained in Art.83 of the Foodstuffs Code. 25 ibid., [20][23]. 26 Both are species of the umbrella GI concept in Art.22.1 of TRIPs.

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Community trade mark Regulation.27 This regimes parallels with trade mark protection were pointed out in a UK House of Lords decision:
The purpose of giving protection to PDOs and PGIs is twofold. It is intended both to protect producers of the products from unfair competition and to protect consumers from being misled by the application to products of false or misleading descriptions.28

Feta was registered as a PDO, under the simplied procedure of Art.17, along with the other fast-track applications. However, the registration was still open to attack on the grounds that it was29 :
[T]he name of an agricultural product or a foodstuff which, although it relates to the place or the region where this product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff.

Generic use was therefore the principal basis for challenging the registration by Denmark, Germany and France in 1996, as each had a signicant domestic Feta industry. Before analysing the Community-level challenge, an instructive prelude is found in the Canadene opinion, where Greeces national rules for protecting Feta were initially tested.

The Canadene opinion

Advocate General Colomers opinion in this litigation unfortunately remained just that, as there was no nal decision by the ECJ.30 Yet it provides much of the factual background on the history of Feta and is referred to in subsequent opinions. It also highlights the extremely limited regulatory options otherwise available for generic terms, thereby indicating the high stakes for Greek producers and their generic competitors. Here a Danish producer and a Greek importer challenged the Greek rules that prevented them from marketing Danish feta in Greece on the basis that the cheese was industrially produced from cows milk. It could still be sold, but only after re-labelling it as white cheese in brine made in Denmark from pasteurized cows milk.31 This being more of a mouthful than the cheese itself, the objection was predictable: this unfamiliar label would make it extremely difcult to sell Danish feta on the Greek market.32 It was argued that the Greek rules amounted to a measure having equivalent effect to an anti-competitive quantitative restriction, contrary to Arts 30 (presently Art.28) and 36 (presently Art.30) of the EC Treaty, by preventing the importation and marketing of cheese otherwise lawfully produced and marketed in Denmark.33 After concurring with this,34
27 Council Regulation 40/94 of December 20, 1993 on the Community Trade Mark [1994] O.J. L11/1 (CTM Regulation). 28 Consorzio Del Prosciutto Di Parma v Asda Stores Ltd [2001] UKHL 7 at [58] (Scott L.J.). 29 As per Art.3.1 of Regulation 2081/92. 30 The case was removed from the Register by an Order (August 8, 1997), as Greeces questions were subsumed in the challenge to Fetas registration under Regulation 2081/92. 31 Canadene AG, above fn.2, [5]. 32 ibid., [6]. 33 ibid., [7]. 34 ibid., [48][49]

the Advocate General considered whether this was a proportionate measure within the safe harbour of one of the public policy exceptions in Art.36.35 At this juncture the opinion cautioned that distinct public policy exceptions would apply depending on whether Feta was categorised as a generic name or an indirect GI, such as Grappa or Ouzo, which could be protected as industrial property.36 The ability to set minimum product standards for otherwise generic terms was very clearly circumscribed by European jurisprudence, limiting the possibilities under consumer protection and fair trading in Art.36.37 If the term was generic Greece could not maintain that the differences between domestic Feta (ewes or goats milk and the natural straining method) and imported feta (cows milk and ultra-ltration) were sufcient for importers to relinquish the name. In light of the principle of mutual recognition of goods lawfully produced and marketed in a Member state the Greek rules were disproportionate. Adequate labelling could inform consumers about the differences in ingredients and methods.38 Nevertheless on the facts, the Advocate General found Feta to be nongeneric in Greece. Evidence included Fetas dened status under Greek law, a Eurobarometer survey in 1994 which demonstrated its geographical signicance to Greek consumers and that Greece was both the largest producer as well as consumer of Feta in the EC.39 In light of the reasoning in Exportur 40 its reputation based on its Greek origin was a sufcient reason to protect it as a species of GI, under the industrial property exception in Art.36,41 so the national rules regulating Feta fell within the safe harbour. Although the Canadene opinion had no direct legal effect, the conclusions to be drawn are that (1) both direct and indirect evidence of generic use was considered by the Advocate General, who concluded that (2) Feta was not considered generic in Greece at the time of this dispute but (3) if it had been declared a generic term, despite the observable differences between Greek Feta and non-Greek feta the national rules would
35 Presently contained in Art.30 of the EC Treaty, which includes grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. 36 Canadene AG, above fn.2, [51]. 37 e.g. see Commission v Italian Republic (C193/80) [1981] E.C.R. 3019 (Italys restriction of the generic term vinegar to wine vinegar was not justiable on grounds of the protection of health, consumers or fair trading); Commission v Germany (C178/84) [1987] E.C.R. 127 (Germanys restriction on the generic term beer under the relevant rules (Biersteuergesetz) was not justied on similar grounds); Minist`re Public v Gerard e Deserbais (C286/86) [1988] E.C.R. 4907 (Frances national law which restricted the generic cheese name Edam to cheese with a minimum fat content of 40% could not be justied on grounds of consumer protection and fair trading). 38 Considered in detail in Canadene AG, above fn.2, [52][67]. 39 ibid., [76][77]. 40 Exportur SA v LOR SA and Conserie du Tech SA (C3/91) [1992] E.C.R. I5529 (Exportur). Exportur permitted reputational GI protection, but prior to this to avail of the industrial property safe haven one had to establish a very strong link between a products qualities and its place of origin, based on the French appellation dorigine. See Commission v Germany (C12/74) [1975] E.C.R. 181 (Sekt). 41 Canadene AG, above fn.2, [72][77].

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not have survived. This laid the foundations for the challenge at the Community level.

Feta at the ECJ The ECJs 1999 decision

Feta had been registered as a PDO under Regulation 2081/92 in 1996.42 A PDO is a more narrowly conceived version of a GI43 and products exhibiting this strong link include Queso Manchego cheese from Spain and Prosciutto di Parma from Italy.44 Feta is considered to be a non-literal GI under Art.2(3).45 A time-honoured association between an expression and a region is sufcient to charge it with geographical salience. Nevertheless Denmark, France and Germany mounted a successful challenge to this registration and the ECJ invalidated the contested Regulation in so far as it concerned Feta.46 The court held that by failing to appreciate the extent of external feta production, the Commission did not appropriately consider all the requisite factors under the Regulation. The opponents arguments had resolved into two broad avenues of attack: (1) that Feta does not satisfy the denition of a PDO; and (2) that it is a generic term, for the Commission had not adequately considered the evidence. The rst argument raises issues of fundamental importance but, being tangential to genericide, it cannot be considered here.47 Turning to the second, the decisive yardstick is the impression of the relevant public. Disagreement centred on whether the status of the term in the country of origin (home country) should be given priority, as the status in Greece was only part of the rst limb in the test48 :
To establish whether or not a name has become generic, account shall be taken of all factors, in particular:

the existing situation in the Member State in which the name originates and in areas of consumption. the existing situation in other Member States, the relevant national or Community laws. The opponents efforts were directed towards more evenly redistributing the weight attached to the various factors, by reducing the emphasis on the home country.
42 It was registered in the Annex to Commission Regulation 1107/96 of June 12, 1996 on the Registration of Geographical Indications and Designations of Origin under the Procedure Laid Down in Art.17 of Council Regulation 2081/92 [1996] O.J. L148/1. 43 See Art.2(2)(a) of Regulation 2081/92. It consists of the name of the region applied to products where the quality or characteristics . . . are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the dened geographical area. 44 See http://ec.europa.eu. 45 The new Art.2(2) in Regulation 510/2006 extends this non-literal designation leeway to PGIs as well. 46 Kingdom of Denmark, Federal Republic of Germany and French Republic v Commission of the European Communities (Joined Cases C289/96, C293/96 and C299/96) [1999] E.C.R. I1541 (Feta 1999). 47 The author has outlined this argument in a longer draft of this article, available at www.oiprc.ox.ac.uk. 48 Contained in Art.3(1) of Regulation 2081/92.

Greece had not only tolerated a European generic market but also allowed imports until 1987, while its own regulatory framework for Feta was also relatively recent.49 Regarding the existing situation in Member States, Feta had been lawfully produced and marketed, cows milk notwithstanding, for several decades. Moreover in an exercise by the Commission to draw up an indicative list of generic terms,50 Feta had been suggested as a candidate by a majority of members.51 Regarding relevant national or community legislation, such use was permitted by national marketing rules for cheese in Denmark from 1963, in the Netherlands from 1981 and in Germany from 1985. At the Community level Feta was treated as a commonly used term for a category of cheese in customs legislation and export refunds for milk products.52 Apart from arguments under the three specied limbs, additional grounds were also raised.53 The defence was that giving priority to the situation in the home country was justied. This best reected the understanding of the relevant public, which was the overarching objective of this test. Greeks consumed the most Feta, so their opinion mattered the most. While the Commissions analysis complied with Art.3, relying on Exportur,54 it was nevertheless appropriate to pay particular attention to the situation in the Member State of origin.55 Reading between the lines, there are hints of a latent vulnerability which was sought to be redressedthe helplessness of the home country to prevent the generic use of a term by external producers. Apart from Denmark, which had specic labelling rules, cheese producers in other members made Feta because no legal provision precluded their doing so.56 That non-Greek producers were permitted to use the term was thus a nding of fact; it did not inexorably suggest generic use.57 This labelling was possibly considered opportunistic, rather than reecting actual consumer usage. The Commission instead preferred survey evidence regarding Feta consumption. While the average annual consumption was 10 kg per person in Greece, it was 0.1 kg per person among the other Member States,58 lending considerable weight to Greek perceptions of the term. The Greek national rules, on the other hand, embody in legislation the traditional use of the name
49 Feta 1999, above fn.46, [57]. 50 Art.3(3) of Regulation 2081/92 required an indicative list of generic expressions to be drawn up and Feta proved controversial. Given the conicting evidence, the Commission resorted to a Eurobarometer survey of 12,800 nationals of the 12 Member States of the EC at the time, and the results led it to conclude that the cheese continued to connote a Greek origin for most of those who knew of it. See Feta 1999, above fn.46, [22][38]. 51 ibid., [58]. 52 ibid., [59]. 53 ibid., [62][64]. 54 Here the court held that despite Touron Alicante and Touron Jijona being considered generic for confectionaries in France, under the relevant bilateral Franco-Spanish agreement, the law of the home country would apply, where these terms were protected indications. See Exportur, above fn.40, [37]. 55 Feta 1999, above fn.46, [68]. 56 ibid., [69]. 57 ibid. 58 ibid., [70].

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Feta in Greece over the centuries.59 Community rules on customs duties and export refunds were of little consequence as they reect an approach specic to customs matters and are not in any way intended to govern industrial property rights.60 Thus national or Community legislation was rarely a decisive guide for evaluating public perception.61 As Greeks were the most signicant consumers of Feta, prioritising their perceptions was therefore appropriate. In due course these arguments proved unconvincing. In its decision to annul the registration, the ECJ found objectionable the Commissions assertions that (1) primary importance was to be given to the situation in the state of origin; and (2) the fact that in other members feta had been used for marketing or in the lawful production of cheese was dismissed as inconsequential.62 Article 3(1) sets out the factors without indicating any hierarchy between them.63 Lawful marketing in other members was clearly envisioned in Art.7(4) as a ground for objection and while it technically did not apply to fast-track registrations, the Commission itself had on prior occasions stated that these registrations must comply with the substantive requirements of the regular registration procedure.64 It had also emphasised that Regulation 2081/92 was not intended to prevent the continued marketing of products legally sold within the Community, so long as they did not conict with traditional fair practice and the actual likelihood of confusion.65 Lawful marketing in other members was thus a factor which could not be wished away and the Commission was asked to reassess the evidence, giving equal consideration to all the limbs of Art.3(1).

(1) legislation regulating the production of Feta in the Community, as well as the historical commencement of and statistics relating to its manufacture69 ; (2) legislation as well as statistics regarding consumption70 ; (3) apart from the indirect evidence above, trying to gauge consumer understanding of the term, both from representations made on labels as well as dictionary and reference work entries71 ; (4) The advisory opinion of the Scientic Committee72 which acknowledged that both production and consumption of Feta was signicantly concentrated in Greece.73 The drafting history reveals that the proposed Regulation was nally adopted by default upon the expiry of the prescribed time period.74 Round two began with a swift challenge by Germany and Denmark, supported by France and the United Kingdom, with the Commission, backed by Greece, sticking to its guns.

Unfettering the generic test in Feta 2005?

This time around the ECJ upheld the Commissions nding that Fetas registration was valid. On the issue of generic status, arguments were advanced by Germany and Denmark that Feta did not have a geographically specic meaning to begin with and even if it once did, it had slipped into usage as a common name. Denmark argued that based on the dispersed Balkan origins for white cheese soaked in brine, it was permanently and irrevocably generic to begin with.75 Yet the Scientic Committees observation was that such cheeses had distinct names in each of these countries.76 Finding these fresh assaults unconvincing, the ECJ once again scrutinised the Commissions evaluation of the various factors. It did so according to the criteria mentioned in Art.3(1)(i) by looking at the existing situation in: (1) the home country and in areas of consumption; (2) other Member States; and (3) the relevant national or Community laws. The existing situation referred to in the rst two limbs covered conditions of both production and consumption. An awkward fact confronting Feta proponents was evidence that Greece itself had permitted both importation and domestic production of cows milk Feta until 1987.77 This was unconvincingly countered with the assertion that if such operations were to persist, they would tend to confer a generic nature on Feta,78 but Greek legislation from 1988 onwards effectively halted this slide into genericide. This line of reasoning contrasts with other decisions
69 ibid., Recitals 1117. 70 ibid., Recitals 1819. 71 ibid., Recitals 2021. 72 The Committee unanimously concluded that feta was not a generic term; ibid., Recitals 2232. 73 ibid., Recital 30. 74 Summarised in Jeremy Reed, Case CommentFeta: A Cheese or a Fudge? [2006] E.I.P.R. 535 at p.535. 75 ibid., [72][73]. 76 ibid., [76]. 77 ibid., [77]. 78 ibid., [78].

Back to the (cheese) board: Fetas re-registration

The judicial rebuke in 1999 required the Commission to give all factors due consideration. However, it retained the discretion to draw its own factual conclusions.66 After deleting Feta from the register, it sent out detailed questionnaires on the production and consumption of cheeses known by that name, as well as gathering evidence of consumer perceptions of the term.67 These were presented to the Scientic Committee, who concluded unanimously that Feta was not generic. The end result was Regulation 1829/2002, whereby Feta was re-registered as a PDO.68 Analytically parsing the Regulation reveals four categories of evidence that were considered by the Commission:
59 ibid., [71]. 60 ibid. 61 ibid., [72]. 62 ibid., [87]. 63 ibid., [89][90]. 64 ibid., [95]. 65 ibid., [97]. 66 As emphasised by Advocate General Colomer in Feta 2005, above fn.1, [136][137] (Feta 2005 AG). 67 Feta 2005, above fn.1, [17]. 68 Commission Regulation 1829/2002 of October 14, 2002 Amending the Annex to Regulation 1107/96 with Regard to the Name Feta [2002] O.J. L277/10.

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by national courts concerning the longstanding generic use of GIs by non-home country producers, such as the British Sherry case,79 indicating a considerable degree of administrative or judicial discretion in such factually sensitive determinations. As regards other EU Members, the ECJ noted that while such production and marketing may have been lawful and this was relevant, this was only one of several factors to take into account.80 As Advocate General Colomer noted, prior to Regulation 2081/92 there was very little that Greek producers could do to stop such labelling in other Member States.81 Finally, statistics revealed that although production in other Member States was relatively large and of substantial duration . . . (from an overall EU perspective) the production of Feta has remained concentrated in Greece.82 After production, the court then considered evidence of consumption. The Scientic Committee established that more than 85 per cent of Community consumption of Feta per capita per year takes place in Greece and the majority of consumers in Greece understood Feta to have specic geographical connotations. However in Denmark, the name was found to be generic.83 Lacking any specic information about the situation in other members, the court relied on the Commissions analysis of labelling practices, found in Recital 20 of the contested legislation84 in determining general European consumer impressions of the term:
(20) According to the information sent by the Member States, those cheeses actually bearing the name Feta on Community territory generally make explicit or implicit reference to Greek territory, culture or tradition, even when produced in Member States other than Greece, by adding text or drawings with a marked Greek connotation. The link between the name Feta and Greece is thus deliberately suggested and sought as part of a sales strategy that capitalises on the reputation of the original product, and this creates a real risk of consumer confusion. Labels for Feta cheese not originating in Greece but actually marketed in the Community under that name without making any direct or indirect allusion to Greece are in the minority and the quantities of cheese actually marketed in this way account for a very small proportion of the Community market.

concluded that several relevant and important factors indicate that the term has not become generic.88 The registration was upheld.

An unfair competition secret ingredient?

The generic use of GIs has been a controversial issue for well over a century,89 but contemporary debates arise in the context of international trade negotiations at the WTO, where outcomes are inuenced by political concessions. Therefore Feta provides a unique opportunity for doctrinal analysis in a multilateral dispute setting. While drawing out its pragmatic implications, this section focuses on the unfair competition agenda in Regulation 2081/92 (and now Regulation 510/2006). Protecting producers against acts of unfair competition such as free riding is an independent concern for certain aspects of the Regulation,90 but may have inltrated the Art.3(1) analysis with grave consequences. Beginning with the less controversial implications, the recongured generic test in Regulation 510/2006 is a likely consequence of this litigation. The home country status is no longer an independent factor, being replaced by a limb that explicitly gives equal consideration to the situation in all Member States.91 Another conclusion to be drawn is that generic use by producers must be considered as part of the overall analysis of how consumers interpret the term. While the longstanding use of Feta outside Greece may give rise to legitimate interests (in an estoppel sense), this argument should not be conated with the test for genericide. Competitors concerns are otherwise accommodated in a provision similar to the relative grounds of opposition in trade mark law.92 Under Art.3, external production is only a factor when it has a demonstrable effect on consumer perceptions. This helps explain why extensive Danish, French and German production was discounted in the nal analysis. However the unfair competition agenda emerges upon revisiting the tipping point test advocated by the Scientic Committee.93 Feta is not generic so long as a signicant part of the relevant public still considers it an indication of geographical origin. By focusing on those who do consider it a GI rather than those who do not, the Danish understanding of Feta as generic is bypassed. This is in contrast to a similar threshold inquiry under the Community trade mark (CTM) regime.94 Both CTM and GI registrations provide for a unitary right across the EU. Yet in the case of a CTM, the sign cannot be registered if absolute grounds for refusal, of
88 ibid., [98]. 89 For an early debate concerning the Paris Convention and dating back to November 10, 1880, see Actes de la Confrence e Internationale pour la Protection de la Proprit Industrielle (2nd edn, ee Berne, 1902), pp.6567. 90 Such as the infringement provisions in Art.13. 91 The tripod has become a biped. Art.3(1) now reads: To establish whether or not a name has become generic, account shall be taken of all factors, in particular: (a) the existing situation in the Member States and in areas of consumption; (b) the relevant national or Community laws. 92 See Art.7(4). 93 See text accompanying above fn.14. 94 As noted by Reed, above fn.74, p.537.

The court thus inferred that general consumers perceive Feta as a cheese associated with Greece.85 This led to an overall nding that Feta consumption practices indicated non-generic use.86 Finally national and community legislation was insufciently probative as to consumer perceptions.87 The ECJ therefore
79 Here Spanish Sherry producers from the Jerez district failed to prevent the use of British Sherry on fortied wines produced in Britain owing to the delay in asserting their rights, as such labelling practices had been followed for over a century. See Vine Products Ltd v Mackenzie [1967] F.S.R. 402. 80 Feta 2005, above fn.1, [77], [84]. 81 Feta 2005 AG, above fn.66, [156]. 82 Feta 2005, above fn.1, [83]. 83 ibid., [85][86]. 84 Reproduced in Feta 2005, above fn.1, [22]. 85 ibid., [87]. 86 ibid., [88]. 87 Only Greece and Denmark had specic legislation and even in Denmark, the legislation referred to Danish feta, implying that Feta by itself retained a Greek connotation; ibid., [88], [91][92].

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178 GANGJEE: SAY CHEESE! A SHARPER IMAGE OF GENERIC USE THROUGH THE LENS OF FETA: [2007] E.I.P.R.

which generic or common use is one, occur in a part of the Community.95 For GIs, the genericide analysis is thus weighted in favour of home country producers. This is similar to German law, where GIs were protected predominantly under Unfair Competition legislation. So long as some appreciable section of the trade [including consumers] regards the description as an indication of origin, it must be protectable as such.96 However there is no compulsion that GIs and registered trade marks should march to the same beat at all times. Tilting the rules in favour of producers, even in the absence of concomitant consumer protection justications, is evinced elsewhere in the Regulations architecture. Article 13(3) stipulated that protected names may not become generic.97 Once they are registered, regardless of future semiotic shifts in the streams of commerce these protected designations are shielded. Furthermore, Art.13(1)(b) prohibits any misuse, imitation or evocation of a registered designation. Preventing infringement by evocation is a standard designed to check the mental association or calling to mind of a registered GI. It prohibits free riding as an instance of unfair competitive behaviour. Evocation does not require any consumer confusion.98 This is emblematic of a longstanding view in Europe that GI protection is a species of broader unfair competition law,99 with an independent agenda for preserving producer goodwill and not limited to situations where this coincides with consumer deception or confusion. There are cogent arguments which suggest that preventing misappropriation or free riding in trade mark law is in principle problematic.100 However, GI protection promotes a basket of policies distinct from trade mark law concerns, so there may be reasons for emphasising producer protection as an independent objective. GI products are frequently artisanal, usually from rural regions and produced according to collectively evolved traditional methods.
95 For a strong version of this proposition, see Ford Motor Company v OHIM (T91/99) March 30, 2002 (Options). (The applicant unsuccessfully argued that Options for insurance and hire-purchase services had acquired distinctiveness in a substantial part of the European Community, even though it was not distinctive in France. The court conrmed that nondistinctiveness for France was a fatal objection to a pan-European unitary right.) 96 F.-K. Beier, The Protection of Indications of Geographical Origin in the Federal Republic of Germany, in Protection of Geographic Denominations of Goods and Services (H. C. Jehoram ed., Sijthoff & Noordhoff, Netherlands, 1980), pp.11, 21. 97 Now Art.13(2) in Regulation 510/2006. 98 As claried by the ECJ in Consorzio per la tutela del formaggio Gorgonzola v Kaserei Champignon Hofmeister GmbH (C87/97) [1999] E.C.R. I1301 at [25][27]. 99 E. Ulmer, Unfair Competition Law in the European Economic Community [1973] I.I.C. 188 at pp.199200; G. Schricker, European Harmonization of Unfair Competition LawA Futile Venture? [1991] I.I.C. 788 at p.800; F. Henning-Bodewig and G. Schricker, New Initiatives for the Harmonisation of Unfair Competition Law in Europe [2002] E.I.P.R. 271 at p.273; C. Wadlow, Unfair Competition in Community LawPart 1: The Age of the Classical Model [2006] E.I.P.R. 433 at p.440. 100 A persistent problem has been to appropriately dene misappropriation so as to separate the desirable copying from the undesirable. See generally M. Spence, Passing Off and the Misappropriation of Valuable Intangibles [1996] Law Quarterly Review 472.

GIs therefore serve as a vector for implementing a raft of policy goals relating to agricultural policy, rural development and in some cases, helping to preserve the cultural heritage.101 While a detailed analysis is beyond the scope of this article, this may justify treating such producers differently. Furthermore, as collective designations usually beyond the control of any one entity GIs are almost by denition vulnerable to generic usage. Feta acknowledged that Greece could do little to prevent generic use outside its borders. While in some situations it may clearly be too late to instantly salvage a GI from this fate,102 in others one gets the impression that opportunistic producers deploy this argument in order to avail of a term for its commercial resonance. A fascinating gambit recently unfolded at the Codex Alimentarius Commission, the body established to set up internationally recognised standards relating to food production.103 A proposal was submitted to establish an international generic standard for Parmesan cheese, which was strongly resisted by Italy and the EU. The issue has been deferred indenitely, but such a standard would considerably undermine the value of Italian Parmigiano Reggiano as a PDO under EU law.104 One also sees genericide raised defensively more often than not as an argument in disputes concerning registered protection.105 Therefore, from a producer protection perspective, setting a suitably high tipping point for genericide becomes necessary. Yet there is a crucial difference between acknowledging that certain aspects of GI law are premised on preventing free riding and allowing this logic to dominate the Art.3 test, which is ultimately about consumer perception. That the former seems to have tainted the latter is evident from Recital 20 of the contested Regulation.106 In trying to gauge the communicative content of Feta across the rest of the EU,107 the Commission reasoned that because cheese labelling made references to Greek images and iconography, this
101 The author elaborates on the differences in policy orientation in D. Gangjee, Quibbling Siblings? Conicts between Trademarks and Geographical Indications (2007) Chicago-Kent Law Review(forthcoming). For attempts to measure the ability of GIs to deliver on these policy goals, see D. Rangnekar. The Socio-Economics of Geographical Indications (UNCTAD-ICTSD Issue Paper No.8, May 2004). 102 Such as the EUs ill-fated attempt during ongoing WTO negotiations to globally claw back a list of 41 names including Roquefort cheese, Parma ham, Rioja wine and Feta, which some jurisdictions consider generic. See EC Press Release, WTO talks: EU steps up bid for better protection for regional quality products (IP/03/1178), August 28, 2003 at http://europa.eu. For an extensive critique of such reclamation projects, see J. Hughes, Champagne, Feta, and BourbonThe Spirited Debate about Geographical Indications (2006) 58 Hastings Law Journal 299. 103 Codex Alimentarius Commission, Report of the TwentySeventh Session (Geneva, June 28July 3, 2004) at Appendix X and Report of the Twenty-Eighth Session (Rome, July 49, 2005), at [167][176]. 104 For details, see http://ec.europa.eu. 105 For a recent illustration see Tea Board of India v The Republic of Tea (US TTAB Opposition No.91118587; August 23, 2006), p.12. An applicant for Darjeeling Nouveau unsuccessfully argued that the Darjeeling certication mark held by the Tea Board of India was invalid, having become generic in the United States. 106 See text accompanying above fn.84. 107 Apart from Greece (non-generic) and Denmark (generic).

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specically communicated a Greek origin for the product, thereby suggesting non-generic use. This may be going too far. After all, there is a difference between a sign which says Chinese Restaurant and a label Made in China. The former is merely an allusive usage found throughout the world, whereas the latter communicates origin more specically. The Commission appears to have collapsed the distinction between the two. It may have done so because the allusive referencing on cheese labels was perceived as free riding on the Greek origins of Feta, despite being used as a generic designation. The ECJ has then endorsed the Commissions view that such labelling could cause a real risk of consumer confusion when this may have been merely evocative referencing.

Concluding comments
The preceding analysis leads to a very modest intermediate conclusion, while opening up another more fundamental line of inquiry. We have an answer for the puzzle we began with: external Feta production was overshadowed because it represents only indirect evidence of consumer understanding, which is the real focus of any genericide analysis. However in reconstructing that understanding by examining Feta labels, the institutional gatekeepers may have allowed free riding concerns to contaminate the consumer perception analysis mandated by Art.3. Setting a high threshold or tipping point before genericide is established (no signicant section of consumers consider a term to indicate origin) is distinct from a sense of judicial outrage at free riding for a term which once

had origin specic meaning. This in turn highlights the conceptual ambiguity at the heart of European GI law. What is and what ought to be the relationship between producer, consumer and competitor interests? Which bits can be explained by resorting to the familiar intertwined logic of consumer protection coinciding with producer interests, and which bits stem from distinct unfair competition roots? The ambiguity is reproduced in Regulation 510/2006.108 Perhaps this reticence to clarify foundations is a side-effect of Sekt 109 and Exportur,110 where the essential function of GI protection was described in terms similar to that of trade mark law. Consumer protection and producer goodwill preservation were bundled together and unpacking them now may lead to an existential crisis. What is more, a reliable and all-pervasive trope of consumer protection is a more attractive proposition at WTO debates. However certain aspects of GI lawbut emphatically not genericide analysisonly make sense when viewed from an unfair competition or free riding prevention perspective. The g leaf of consumer protection is easily blown aside by sufciently determined gusts of litigation, leading to embarrassment all round.111 Finally even European trade mark law has embraced a provision which prohibits free riding and protects producer interests per se.112 Therefore an honest evaluation of the unfair competition inuence on European registered GI law is long overdue. GIs have the potential to benet those otherwise marginalised by the intellectual property system and a convincing epistemological consensus is the rst step towards fullling this potential in a defensible manner.

108 It broadly refers to benets to producers, i.e. farmers and the rural economy (Recital 2); consumers who rely on these designations for quality assurances (Recital 3); and preserving the communicative integrity and informational content of such signs (Recital 4). 109 Sekt, above fn.40, [7] ([GIs] must satisfy the objectives of such protection, in particular the need to ensure not only that the interests of the producers concerned are safeguarded against unfair competition, but also that consumers are protected against information which may mislead them). 110 Exportur, above fn.40, [28] (Such names may nevertheless enjoy a high reputation amongst consumers and constitute for producers established in the places to which they refer an essential means of attracting custom. They are therefore entitled to protection). 111 One need only consider the strained consumer protection rationale in Consorzio del Prosciutto di Parma v Asda Stores Ltd (C108/01) [2003] 2 C.M.L.R. 21. 112 See Spa Monopole v OHIM (Case T67/04) (CFI, May 25, 2005) at [51]. The court interpreted Art.8(5) of the CTM Regulation, which prohibits a sign that takes unfair advantage of the distinctive character or repute of an earlier mark from being registered. This meant the exploitation and free-riding on the coattails of a famous mark.

[2007] E.I.P.R. ISSUE 5 SWEET & MAXWELL LIMITED [AND CONTRIBUTORS]