1. Introduction
In 1979, the Livradois Cheese Company commenced production and marketing of a cheese with a distinctive, central, horizontal ashy stripe on its slice, which became known as ‘Morbier’. Subsequently, in 2002, the name ‘Morbier’ was granted protected status under the European Union's (EU) geographical indication (GI) scheme. This registration stipulates the use of the name to a specified geographic area and mandates adherence to specific production criteria.Footnote 1 As a result of noncompliance with the established requirements, Livradois is prevented from using the name ‘Morbier’.
In a surprising turn of events, Livradois has been mandated to discontinue its three-decade-long practice of manufacturing cheese with a central and horizontal ashy stripe. The Court of Appeal of Paris reached this verdict on 18 November 2022, citing the stripe as an illicit ‘evocation’ according to the EU regulation on GIs.Footnote 2
GIs are distinctive signs used to identify products originating from a particular region, possessing specific qualities and a reputation linked to their place of origin. The names ‘Morbier’, ‘Scotch Whisky’, and ‘Champagne’ serve as typical examples. The scope (level) of protection accorded to GIs is a contentious issue worldwide: ‘New World’ countries, including the United States (US), advocate for protection that only prevents confusion, while ‘Old World’ countries, such as the EU, seek to forbid third-party use of GIs even when confusion is unlikely.Footnote 3 As a result, a temporary compromise has been reached in the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). This compromise mandates that WTO members offer expanded protection for wines and spirits (Article 23), while limiting protection for other goods (Article 22).Footnote 4 Consequently, the use of the term ‘Cognac style’ to describe a brandy produced in New Zealand is not allowed, whereas the use of ‘Roquefort style’ to describe a cheese made in Southern California may be permissible.Footnote 5 As a result, a key area of focus in international trade negotiations in the post-TRIPS era has been the expansion of GI protection.Footnote 6
In recent years, there has been a trend towards an expanding scope of GI protection, driven primarily by protection against evocation.Footnote 7 This anti-evocation protection is characterized by the proscription of any act that brings to mind a GI or GI-denominated product. This protection is considerably broader than the likelihood of confusion standard under Article 22 of the TRIPS Agreement and can prohibit evocation even when no confusion arises.Footnote 8 Moreover, anti-evocation protection can impede the use of dissimilar names, graphics, and even product shapes, extending the protection beyond the ambit required under Article 23. This was exemplified by the above-mentioned ‘Morbier’ case, where the ashy stripe was deemed an unlawful evocation.
The anti-evocation protection is driving the expansion of GI protection at three levels. The first level of expansion occurs at the global level, where an increasing number of non-EU countries are offering anti-evocation protection for GIs, influenced by the EU's promotion of anti-evocation protection in international trade negotiations.Footnote 9 The second level of expansion takes place at the European level, where broad interpretation of the concept of evocation by the Court of Justice of the European Union (CJEU) has resulted in an increasing number of acts falling within the scope of the EU anti-evocation law, such as the use of graphics or product shape.Footnote 10 The third level of expansion takes place at the interaction level, where the expansion of anti-evocation protection within the EU serves as a reference for non-EU countries, leading to an expansion of anti-evocation protection in those countries. The legislative proposal by European Commission (EC) in 2022 for a definition of ‘evocation’, currently under intense debate in the prospective revision of the EU GI scheme,Footnote 11 could provide a valuable reference for the development of anti-evocation laws in non-EU countries.
On the one hand, proponents view the trend of expanding the scope of protection for GIs as providing the maximum level of safeguarding.Footnote 12 On the other hand, this expansion of protection raises concerns about potential restrictions,Footnote 13 such as those on free competition,Footnote 14 freedom of expression,Footnote 15 international trade,Footnote 16 and rural development.Footnote 17
The granting of exclusive rights to one party inherently imposes restrictions on others. However, a key consideration is whether these restrictions are reasonably necessary for achieving the intended objectives of anti-evocation protection.Footnote 18 In other words, the question arises as to whether the scope of exclusive rights conferred by the anti-evocation protection is justifiable. This issue of justification not only poses a challenge for EU law enforcers,Footnote 19 but will also be of significance to other nations that implement anti-evocation protection.
This article presents a critical analysis of the struggle of EU law enforcers to justify the prohibition of evocation and exposes the flaws in the justifications they have provided. The focus on law enforcement authorities' formal justifications is particularly crucial as they directly impact enforcement errors and inconsistencies.Footnote 20 The article begins with a brief overview of the expanding trend of GI protection, followed by a historical review of the reasons behind law enforcers’ constant search for justification. It subsequently scrutinizes the rationales relied upon by the enforcers and highlights the enforcement errors that arise from the inconsistent criteria for determining illegal evocation resulting from the varied justifications. The limitations inherent in the rationales are also identified. Ultimately, the article highlights a new concern arising from the emerging trend of authorities disregarding the rational basis and reflexively applying the anti-evocation clause.
2. Where We Are Today: Anti-Evocation Protection as the Driving Force of GI Protection Expansion
This section elucidates how anti-evocation protection is propelling the contemporary and prospective expansion of GI protection worldwide and within the EU.
2.1 Geographical Expansion of Anti-Evocation Protection
Under the impetus of the EU, a growing number of non-EU countries have implemented, or are contemplating, the adoption of anti-evocation protection for GIs in their domestic legislation. During the Uruguay Round of negotiations that established the WTO, the EU attempted, albeit unsuccessfully, to establish anti-evocation protection as the minimum standard that WTO members should meet.Footnote 21 More recently, the EU made another unsuccessful attempt to include an anti-evocation clause in the Geneva Act of the Lisbon Agreement on Appellations of Origin (AOs) and GIs.Footnote 22 Nevertheless, those failures did not prevent the EU from negotiating bilateral agreements that request its trading partners to adopt anti-evocation protection for GIs in their national laws. To date, the EU has encouraged the incorporation of anti-evocation provisionsFootnote 23 in international trade agreements with various countries across Asia (e.g., China,Footnote 24 Mongolia,Footnote 25 Kazakhstan,Footnote 26 Kyrgyz RepublicFootnote 27), Europe (e.g., Switzerland,Footnote 28 Republic of Moldova,Footnote 29 Iceland,Footnote 30 Georgia,Footnote 31 Kosovo,Footnote 32 UkraineFootnote 33), North America (e.g., CARIFORUM statesFootnote 34), South America (e.g., ChileFootnote 35), Africa (e.g., Morocco,Footnote 36 SADC EPA statesFootnote 37), and Oceania (e.g., New Zealand,Footnote 38 AustraliaFootnote 39). Some countries, such as China,Footnote 40 Ukraine,Footnote 41 Switzerland,Footnote 42 and Georgia,Footnote 43 have embraced anti-evocation protection, while others, such as Australia,Footnote 44 remain sceptical. In light of the global expansion of trade and increasing consumer demand for high-quality and authentic agri-food products, the adoption of anti-evocation protection is expected to become more widespread, with the EU continuing to play an active role in promoting and advocating for enhanced GI protection worldwide.
2.2 Expansion of the Scope of Anti-Evocation Protection
The protection scope of anti-evocation has expanded in recent years, largely due to rulings by the CJEU, resulting in an increasing number of acts falling within its purview. In the ‘Cambozola’ case of 1999, the CJEU elaborated for the first time on anti-evocation protection, ruling that:
‘Evocation’ … covers a situation where the term used to designate a product incorporates part of a protected designation, so that 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.Footnote 45
The contested sign ‘Cambozola’ was found likely to evoke the GI ‘Gorgonzola’ based on three factors. The first factor concerns the similarity of names, with the contested term incorporating part of a protected designation resulting in obvious phonetic and visual similarities between the two terms.Footnote 46 The second factor relates to the proximity of products with the product covered by the contested sign (soft blue cheese) not being dissimilar in appearance to the GI product.Footnote 47 The third factor concerns intent or fault, with the similarity between the two names not being fortuitous but intentionally sought by the disputed name user.Footnote 48
Notably, the ‘Cambozola’ case rejected the requirement of a likelihood of confusion as a condition for evocation, acknowledging that ‘it is possible … for a protected designation to be evoked where there is no likelihood of confusion between the products concerned’.Footnote 49 This approach is further reinforced in the ‘Viiniverla’ case, where the CJEU explicitly stated that the fact that ‘that name is not capable of misleading those consumers’ was ‘not relevant for the purposes of assessing the existence of an “evocation”’.Footnote 50 Instead, the CJEU underscored the significance of preventing ‘any association of ideas regarding the origin of the products’ and prohibiting traders from exploiting the reputation of the GI.Footnote 51 It is important to highlight that the ‘Viiniverla’ case not only dismisses the necessity of a likelihood of confusion as a condition for evocation but also rejects any consideration of likelihood of confusion in determining the existence of evocation.
The ‘Parmesan’ case introduced the expansion of protection, with the CJEU adding ‘conceptual proximity’ as a consideration for determining the presence of evocation,Footnote 52 no longer limited to phonetic and visual similarity as proposed in Cambozola. In this case, the CJEU took into account the conceptual proximity between the terms ‘Parmesan’ and ‘Parmigiano Reggiano’ as a factor in assessing evocation, despite the possibility of not being exact translations.Footnote 53
On this basis, in Glen, the CJEU further highlighted the critical role of conceptual proximity, holding that even in the absence of phonetic and visual similarity, conceptual proximity alone can give rise to unlawful evocation.Footnote 54 Thus, the denomination ‘Glen Buchenbach’, although not visually or phonetically similar to the GI ‘Scotch Whisky’, may still fall within the prohibition of anti-evocation due to its conceptual proximity to the GI. A year later, in Queso Manchego, the CJEU went a step further, ruling that the use of figurative signs evoking the geographical area with which a designation of origin is associated (in that case, the illustrations of a character resembling Don Quixote de La Mancha, a bony horse, and landscapes with windmills and sheep) should be prohibited.Footnote 55 Another year later, in Morbier, while the CJEU did not provide an opinion on assessing evocation, the Advocate General (AG) suggested that similar product appearances could likewise give rise to unlawful evocation.Footnote 56 The Court of Appeal of Paris took that view and ruled that the defendant's cheese must no longer bear the black stripe, which might bring the GI Morbier Cheese to mind.Footnote 57 Finally, the latest development is the ‘Champanillo’ case, in which the CJEU extended the prohibition scope to include the use of a contested element on dissimilar products or services.Footnote 58 In that case, the defendant used the name ‘Champanillo’ for catering services, a category distinctly separate from sparkling wines covered by the GI ‘Champagne’.
As depicted in Table 1, the CJEU's evolving interpretations, spanning from the ‘Cambozola’ case in 1999 to the ‘Champanillo’ case in 2021, have led to changes in the factors considered for assessing evocation.
Evolving Factors in Determining Evocation
The factors that were previously considered, such as phonetic and visual resemblances, product proximity, and the use of figurative or verbal elements, have gradually been recognized as not being prerequisites for determining evocation. Furthermore, as evident from Table 1, likelihood of confusion is not only excluded as a prerequisite but also deemed irrelevant for assessing evocation. Instead, the CJEU consistently emphasizes the consumer's establishment of a mental link between the element used and the protected GI as the primary determinant for evocation,Footnote 59 as reiterated in the Champanillo case:
The essential element, to establish the existence of an evocation, is that the consumer establishes a link between the term used to designate the product in question and the protected geographical indication.Footnote 60
As a consequence, the scope of anti-evocation protection has progressively expanded, emerging as a central element of GI protection.Footnote 61 The expansion of the scope of anti-evocation protection has also raised certain concerns, particularly in relation to restrictions on the free use of descriptive terms, and the possibility of overbroad protection that could hinder fair competition.Footnote 62 The subsequent sections of this article aim to provide an in-depth analysis of the challenges faced by law enforcement agencies in their efforts to address the justifiability of anti-evocation protection as a means of safeguarding GIs.
3. What Brought Us to Where We Are: Creation of Anti-Evocation Protection
Before delving into how law enforcement agencies respond to the question of whether anti-evocation protection is justified, this section briefly outlines the motivations behind agencies addressing this issue.
3.1 Expansion of Protection without Historical Roots
The question of why the justifiability of protecting GIs against evocation is a source of concern for law enforcement authorities can be partially answered by reviewing the history of introducing anti-evocation protection for GIs. Before the provision providing anti-evocation protection first appeared in the 1990s in Article 13 of the EU GI Regulation (Regulation 2081/92), no precedent for such protection existed at the EU level. Even if we trace back to the pre-1990s French system of Appellation d'Origine Contrôlée (AOC), which is recognized as having inspired the creation of the EU GI regime,Footnote 63 no tradition of prohibiting evocation existed in France either.Footnote 64
In the pre-1990 French law, the acts prohibited were more closely related to consumer harm, such as deceiving consumers or causing consumer confusion. The likelihood of confusion was the benchmark for delimiting the protection boundary and has been used continuously under trademark law,Footnote 65 the sui generis law on AOC,Footnote 66 the law against unfair competition,Footnote 67 and the agreements concluded between France and other countries on GI protection.Footnote 68
The use of an indication sufficiently evocativeFootnote 69 of the AOC was prohibited not solely because of the evocative effect itself, but primarily due to the deceptive effect that such use could have.Footnote 70 For example, the trademarks ‘Fort-Médoc’,Footnote 71 ‘Vieux-Cahors’,Footnote 72 and ‘Ritzlinger’Footnote 73 were banned not because they contained the AOC name ‘Médoc’, ‘Cahors’, or a name recalling ‘Riesling’ but because they were likely to cause confusion. Consumer confusion was an essential element of infringement and could be manifested by a false perception of the geographical origin of the product,Footnote 74 by mistake as to the quality of the goods (even if the product came from the region indicatedFootnote 75),Footnote 76 or by a misunderstanding of an unauthorized product by consumers as an authorized product.Footnote 77
Conversely, no infringement was found when the defendant used a sign not liable to be confused with ‘Plzen’, ‘Pilsen’, ‘Pilsner’, and ‘Pilsener’.Footnote 78 If evocation was likely, but no evidence of fraud or likelihood of confusion was produced, the validity of the contested mark would not be denied (e.g., ‘Pilsheim’Footnote 79), the act causing the evocation would not constitute an act of unfair competition (e.g., ‘Romanor’Footnote 80), the act would not be liable under the AOC law (e.g., ‘Cahors’Footnote 81), and it would not constitute ‘imitation’ prohibited by the Lisbon Agreement (e.g., ‘Pilsheim’Footnote 82). In a nutshell, the conventional standard for deciding whether employing a name that imitated or closely resembled the AOC should lead to prohibition hinged on consumer confusion, not evocation.Footnote 83
Without historical roots, the dramatic shift in the criteria for delineation in the 1990s from consumer confusion to evocation has taken law enforcers out of their ‘comfort zone’, leaving them searching for justifications for their decisions against evocation.
3.2 Lack of Legislative Clarification on the Reasons for Introducing Anti-Evocation Protection
The lack of a formal explanation for the introduction of anti-evocation protection is another reason prompting law enforcement agencies to discuss the rationale behind the protection. When the EC initially proposed the EU GI regulation, it specified that protected GIs should be shielded from ‘any practice which constitutes an act of unfair competition, including practices liable to mislead the public as to the true origin of the product’.Footnote 84 ‘Evocation’ was one such practice listed.Footnote 85 This provision suggests that the goal of introducing anti-evocation protection was to prevent unfair competition, including consumer confusion. However, this provision was excluded from the final version of the GI regulation.Footnote 86 Consequently, the legislative language fails to offer a rationale for the absolute prohibition of evocation, prompting judges to seek justifications for their rulings against evocation. As will be discussed in Section 4, this lack of guidance has given rise to divergent interpretations among law enforcement authorities, leading to inconsistencies and errors in the application of the anti-evocation clause.
4. Making Sense of Where We Are: The Shaky Rational Foundations of the Anti-Evocation Protection
Section 2 demonstrated that the essential factor in establishing evocation is the consumer's establishment of a mental link between the disputed element and the protected GI.Footnote 87 However, as depicted in Table 2, numerous decisions from enforcement authorities, including national courts (using French courts as an illustration), the EU Intellectual Property Office (EUIPO), the General Court of the CJEU, and even the Court of Justice, consider or reference additional factors beyond the establishment of a mental link when assessing the existence of evocation.
Examples of Decisions Considering Additional Factors in Assessing Evocation
Based on the examples provided in Table 2,Footnote 88 consumer confusion and free-riding are frequently taken into account as additional factors when assessing evocation by enforcement agencies. The timeline reveals that decisions emphasizing consumer confusion typically precede those focusing on free-riding. Notably, the Court of Justice's continuous attention to the implications of evocation for free-riding since 2016 has contributed to an increased consideration of free-riding in decisions by the General Court and the EUIPO. However, it is important to acknowledge that the precise timeline and consistency of this shift may vary among enforcement agencies. Even within the same agency, it can be challenging to pinpoint the exact dates when the transition from considering confusion to considering free-riding occurred, as decisions during the same period may exhibit a mix of considerations, with some emphasizing confusion and others focusing on free-riding.
In addition, less frequently examined factors include the defendants' intent and the broader objectives of GI protection policies. Moreover, a notable trend highlighted in Table 2 is the increasing occurrence of cases in recent years where the EUIPO and national courts no longer consider these additional factors. Instead, the existence of a mental link alone is deemed adequate to establish the presence of unlawful evocation.
The subsequent discussion in this section illustrates that enforcement authorities frequently incorporate additional considerations to support the prohibition of evocation. These considerations are recognized in certain decisions as potential harms to be prevented or benefits to be pursued through anti-evocation measures. This section critically evaluates the extent to which these additional considerations offer solid justifications. Additionally, it highlights the inconsistencies in determining the presence of unlawful evocation due to the varied range of additional considerations employed, resulting in errors in the application of the anti-evocation clause.
4.1 Consumer Confusion
In the early stages of implementing the EU's anti-evocation law, enforcement authorities relied on the idea that evocation could cause confusion to justify its prohibition. In other words, the prohibition of evocation was based on the need to prevent consumer confusion or consumer harm. As a result, the likelihood of confusion became the primary criterion for determining an unlawful evocation, even though this deviated from the evocation's literal meaning.
4.1.1 Likelihood of Confusion as the Rationale for Prohibiting Evocation
As illustrated in Section 2, an important aspect of anti-evocation protection is that it does not require demonstrating a risk of consumer confusion. The EU GI Regulation explicitly prohibits any evocation, which literally means ‘to bring to mind’,Footnote 89 without requiring a cognitive response in the consumer's mind that leads to confusion. However, numerous decisions from law enforcement authorities, including French courts, the EUIPO, and even the General Court of the CJEU,Footnote 90 go the extra mile in establishing a likelihood of confusion, particularly during the early application of the anti-evocation provision. This additional effort to identify confusion appears to be an endeavour to justify the prohibition of evocation by establishing its legitimacy through the potential deceptive consequences linked to evocative practices.
Specifically, the phenomenon of establishing legitimacy based on the likelihood of confusion is prominently observed in the early judgments of French courts. As mentioned earlier, French courts have traditionally used the likelihood of confusion test to determine whether an act falls within the scope of the prohibition.Footnote 91 When faced with an unfamiliar test that relies solely on a mental connection, which appears less closely linked to consumer harm, French courts spontaneously explain why evocation should be prohibited. In their reasoning, they have always relied on the likelihood of confusion to justify their decisions against evocation. Some French courts have based their justification on the abstract hypothesis that confusion will result from mental association. This theoretical approach assumes that confusion is inherent in the concept of evocation and that once an evocation is created, it sows the seeds of confusion. In the case of 22 February 2011, concerning the assessment of whether the disputed designation infringed upon ‘Châteauneuf du Pape’, the French Supreme Court stated: ‘The use of the denomination “Enclave des Papes” can only evoke this appellation, seeding confusion (semant la confusion) in the mind of the consumer, whether experienced or not, in this matter.’Footnote 92 Alternatively, some courts have sought concrete evidence of confusion in individual cases to justify the prohibition of evocation, rather than relying on abstract theoretical assumptions. In an appellate case challenging the prohibition imposed by the Nîmes court on the use of ‘La Châsse du Pape’, which was determined to ‘subtly or even subliminally evoke the prestigious appellation in the minds of more or less knowledgeable consumers’,Footnote 93 the French Supreme Court found that a significant likelihood of confusion existed with the GI ‘Châteauneuf-du-Pape’.Footnote 94 This factual finding of the risk of confusion served as the basis for the Court's definitive establishment of the offenses in question, stating that ‘there is no uncertainty as to the offenses retained’.Footnote 95
Similarly, the practice of legitimizing prohibitions on evocation based on the likelihood of confusion has been observed in certain rulings by the EUIPO. Some EUIPO decisions have explicitly stated that the establishment of unlawful evocation does not require proving a likelihood of confusion or deception among the public.Footnote 96 However, the EUIPO appears to grapple with the inclination to concurrently consider the potential for confusion when establishing the existence of unlawful evocation. For instance, the First Board of Appeal issued the following determination:
Article 118m(b) of Regulation (EC) No 1234/2007 applies and, a fortiori, when evocation is so obvious, that there is a likelihood of confusion or deception on the part of the public. It could therefore also be an evocation in relation to PDOs … in so far as the consumer might possibly believe, erroneously, for example, that the sign ‘Chacomena’, used for identical (wines) or comparable goods (alcoholic beverages based on wines) is (or includes) ‘chacolí’ .Footnote 97
It appears that the EUIPO considers the presence of confusion strengthens the case for prohibiting evocation, adding further justification to the decision. A high likelihood of confusion is not necessary to justify the prohibition of evocation, but only a weak likelihood, even for a small portion of the relevant public. For instance, the EUIPO has ruled that ‘PRO&ECO’ evokes Italian GI ‘Prosecco’,Footnote 98 ‘Sangre de Toro’ evokes ‘Toro’,Footnote 99 ‘Colombueno’ evokes ‘Café de Colombia’,Footnote 100 ‘Portobello’ evokes ‘Porto’,Footnote 101 and ‘Port Ruighe’ constitutes an unlawful evocation.Footnote 102 The basis for these rulings is that the possibility cannot be excluded that at least a part of consumers may be misled or deceived.
The General Court of the CJEU also falls into the trap of relying on the likelihood of confusion as a basis for support. Certain judgments of the General Court have been criticized by AG Sánchez-Bordonam for over-reliance,Footnote 103 and they will be further analyzed in the subsequent discussion, along with the erroneous outcomes arising from the excessive reliance on the likelihood of confusion.
4.1.2 Limitation I: Pitfalls of Over-Reliance on the Likelihood of Confusion Test
When confusion prevention is regarded as the primary basis for prohibiting evocation, authorities may tend to apply the anti-evocation clause by focusing excessively on whether or not confusion arises. In certain instances, they may even assume that the absence of confusion automatically means the absence of unlawful evocation, which goes against the language of the anti-evocation provision. Additionally, the over-reliance on the likelihood of confusion test can lead to the ineffectiveness of the anti-evocation provision in prohibiting certain non-confusing but still harmful mental associations, which have long been the target of GI policies due to their potential to undermine or exploit the reputation of GIs.Footnote 104
One such case that illustrates this issue is the ‘Port Charlotte’ case,Footnote 105 where AG Sánchez-Bordona explicitly criticized the General Court's overreliance on the likelihood of confusion test. According to AG Sánchez-Bordona, while the General Court acknowledged that evocation protection does not necessitate the presence of a likelihood of confusion, it nevertheless erroneously concluded that there was no evocation because whisky is a different product and there was no potentially misleading or confusing statement in the contested mark.Footnote 106
This same flawed approach is also evident in the EUIPO's decisions concerning ‘Port Ruighe’,Footnote 107 ‘Cave de Tain’,Footnote 108 ‘Yanghe’,Footnote 109 ‘Portage Dry Gin’,Footnote 110 ‘La Manche’,Footnote 111 and ‘Las Villas’,Footnote 112 where the EUIPO ruled out the possibility of evocation due to the absence of any risk of confusion. The EUIPO considered whether the relevant public would be misled when encountering the contested sign as the key to determining the existence of evocation.Footnote 113 However, the absence of a likelihood of confusion cannot be equated with the absence of any harm. For instance, in a case similar to the ‘Port Charlotte’ case, the CJEU found that the word mark ‘Portwo Gin’ evoked the GI ‘Porto’ and thus was likely to exploit the reputation of that GI.Footnote 114 Focusing excessively on the likelihood of confusion test enables those non-misleading but harmful mental associations to go undetected.
Moreover, AG Sánchez-Bordona missed the opportunity to highlight another flaw, namely the overly narrow interpretation of the evocation concept. Two different interpretations of the evocation concept are possible: first, the defendant's use triggers the reaction ‘this is X’ in the consumer's mind, and second, it generates the response ‘this reminds me of X’. In discussing the US right of publicity law, which also provides anti-evocation protection, Haemmerli distinguishes between these two different psychological reactions.Footnote 115 According to Haemmerli, the use of a robot dressed in a wig, gown, and jewellery, which resembles the co-host of the US television game ‘Wheel of Fortune’, Vanna White, may bring White to mind, but all agree that the robot is not White herself.Footnote 116 The same distinction can be made in the context of GI protection. If the underlying rationale for the prohibition of evocation were merely to prevent confusion, then a narrow interpretation of the evocation concept as the ‘this is X’ reaction would be appropriate. However, if the anti-evocation protection is justified by the need to pursue other objectives other than consumer prevention, such as preventing dilution or free-riding, a broader interpretation of evocation is necessary. In such cases, it only requires a consumer response that evokes thoughts of the protected product (‘this reminds me of X’), rather than the consumer believing that the defendant's product is the protected product (‘this is X’).
Early decisions by the EUIPO demonstrate that evocation was interpreted as ‘this is X’ when the justification for anti-evocation was based on preventing confusion. This narrow interpretation persisted even after the CJEU's decision in Glen, which emphasized the need to establish a ‘sufficiently clear and direct’ mental link between the contested sign and the GI product to constitute an unlawful evocation.Footnote 117 In the ‘Port Charlotte’ case cited above, the disputing parties argued over whether consumers perceived the product in question as the genuine product covered by the GI (whether ‘this is X’). The plaintiff claimed:
an average consumer seeing the expression “port charlotte” displayed on a bottle containing an alcoholic beverage would be led to believe that the beverage in question is related to port wine or, at least, to wonder whether it is (emphasis added).Footnote 118
The court also interpreted evocation as ‘this is X’, arguing that due to differences in ingredients, alcohol content, and taste between port wine and whisky, consumers would not associate a whisky with port wine.Footnote 119 Similarly, in the ‘Portwo Gin’ case, the Opposition Division of the EUIPO concluded that consumers would not associate a gin bearing ‘Portwo Gin’ with the GI product Porto, as there were non-insignificant differences between the respective features of the two.Footnote 120 In its decision of 2020, the Second Board of Appeal diverges from the flawed approach taken by the Opposition Division by interpreting ‘evocation’ as ‘this reminds me of X’, thereby overturning the Opposition Division's determination of the absence of unlawful evocation. The Board provided a clarification:
The use of the contested trade mark would not only benefit from a transfer of the distinctive qualities of the PDO ‘Port’ that it has gained over the years, which in turn would enhance the younger mark's ability to stand out among its competitors, but it would also benefit from the transfer of the earlier mark's image of a prestigious and traditional well-established wine with a rather long history on the market in the EU.Footnote 121
Additionally, the incorrect reading of evocation as ‘this is X’ has resulted in another flawed conclusion by the EUIPO, which assumes that evocation will not occur where the product in question is non-comparable (in particular, physically dissimilarFootnote 122) to the GI product. This is based on the rationale that if the products are different in terms of their recognizable features (e.g., food service and wine;Footnote 123 hotel service and wine;Footnote 124 retail service and wine;Footnote 125 bread and wine;Footnote 126 coffee and fruit wine;Footnote 127 whiskey and wineFootnote 128), using a similar term on the contested product would not lead to a misperception that the product is a GI product. No one would make the mistake of believing that bread labelled as ‘Champagne’ is Champagne wine due to the clear visual differences between the two products. In the cases concerning ‘Doura de Tears of God’Footnote 129 and ‘Champagnola’Footnote 130, the EUIPO Opposition Division ruled out the possibility of evocation because the contested goods (e.g., whiskey, gin, non-alcoholic beverages) are not comparable to or even completely different from the protected products (i.e., wines), and the public will not believe that the beverages under the contested names are a Champagne or Douro wine (no ‘this is X’ reaction). The mistake of these decisions, as pointed out by the EUIPO Board of Appeal, lies in taking comparability between the products as a necessary condition for triggering anti-evocation protection.Footnote 131 Left unsaid is that this error stems from the idea of equating evocation with the misunderstanding ‘this is X’. This idea may, in turn, be erroneous since preventing reputational damage, such as dilution or free-riding, rather than preventing consumer misunderstanding, is increasingly regarded as the goal that justifies the anti-evocation protection. When preventing reputational damage serves as the justification, evocation needs to be interpreted broadly, requiring merely a consumer response that ‘this reminds me of X’. This is because a use not making consumers believe that the defendant's goods are a GI product (no ‘this is X’ reaction) can nevertheless make consumers think of the GI product (‘this reminds me of X’), which may, in turn, transfer the GI product's positive image to the defendant's goods, or at least enhance consumers' attention to the goods.Footnote 132
4.1.3 Limitation II: Moving Beyond a Confusion Prevention Rationale to Explain
The use of confusion prevention as the basis for justifying anti-evocation protection raises problematic issues. If the primary goal is to prevent confusion, why not adopt a likelihood of confusion test rather than the evocation test? In the ‘Pueroto’ case, the EUIPO put forward an explanation that terms evoking GIs may also be used in conjunction with potentially misleading or deceptive statements, such as the combination of accurate and false GIs, or the suggestion of a geographical location through terms such as ‘type’, ‘flavour’, or ‘méthode’.Footnote 133 However, this explanation is flawed as labelling a prominent caveat to exclude any possibility of confusion does not justify an exemption from the anti-evocation provision. For example, labelling a highly visible warning that reads ‘Our Champagne is produced in the US and has nothing to do with the genuine Champagne wine coming from France’ would not absolve one from liability. The rationale of preventing confusion fails to explain why a mental association that is completely free of confusion cannot be allowed, and why measures to prevent confusion, such as mentioning the true origin of the contested goods and providing a disclaimer,Footnote 134 are irrelevant when determining the existence of a wrongful evocation. Given that the prevention of confusion theory is an insufficient justification, an argument that mental association leads to reputational damages such as dilution or free-riding is proposed instead.
4.2 Free-Riding
The assertion that the prohibition of evocation can be justified by the need to prevent free-riding gives rise to more concerns than it resolves, casting doubt on its validity as a justifiable basis for adopting such a stance.
4.2.1 The Emergence of Free-Riding as a Justification
When the argument that evocation leads to confusion is deemed insufficient as a justification for anti-evocation, the argument that evocation enables free-riding has gradually taken precedence. Early decisions prohibited evocation on the basis that it would result in the dual harm of confusion and free-riding. For example, the French Council of State rejected the registration of ‘Chaume-Premier Cru des Coteaux du Layon’ as an AOC not only due to the likelihood of creating a false consumer perception of a wine hierarchy with the use of the name ‘Chaume’ associated with ‘Premier Cru’, but also because of the potential to divert or weaken the reputation of the existing GI ‘Quarts de Chaume’.Footnote 135 The grounds for prohibition were based on both consumer confusion and reputational harm.
The ‘Viiniverla’ case marked a turning point where one could raise concerns about the credibility of confusion prevention as valid rational basis for anti-evocation measures. In this case, the referring court inquired whether the fact that the name is not misleading to consumers should be considered in evaluating evocation. The CJEU responded negatively, emphasizing that ‘what matters is, in particular … that a trader does not take undue advantage of the reputation of the protected geographical indication’.Footnote 136 In Queso Manchego, the prevention of free-riding was explicitly recognized as the overriding rationale for anti-evocation. AG Pitruzzella noted:
the main objective of protection against evocation is to protect the traditional quality and reputation of registered names against parasitic acts rather than to protect consumers against misleading conduct.Footnote 137
The prohibition of free-riding as a justification for banning evocation has been cited in an increasing number of cases, which aligns with AG Pitruzzella's viewpoint.Footnote 138 Certain decisions justify their position on the hypothesis that the defendant may unfairly benefit from the reputation associated with a GI through mental association, without concrete evidence to substantiate the claim.Footnote 139 In contrast, some other decisions have relied on concrete evidence to establish the likelihood of free-riding, thereby bolstering their stance. For instance, the EUIPO concluded that the use of ‘Champ Champ’Footnote 140 and ‘Champaws’,Footnote 141 supported by evidence of product resemblance and explicit references to Champagne in marketing materials, amounted to an unfair advantage taken from Champagne's reputation. Based on objective evidence demonstrating the presence of an unfair advantage, ‘Champ Champ’ and ‘Champaws’ were deemed as unlawful evocation. Some have even suggested that free-riding is a necessary element for evocation to exist. In the case of ‘Santa Croce’, the EUIPO excluded the risk of evocation on the basis of the absence of evidence supporting the exploitation of the GI wine's reputation.Footnote 142 It is noteworthy that some authorities have broadened the scope of reputation protection beyond free-riding to encompass dilution, which involves depriving the GI of its distinctiveness and conferring on it a generic character.Footnote 143
4.2.2 Limitation I: False Presumption of Reputation
Substantiating the prohibition of evocation on the grounds of preventing free-riding poses a significant challenge due to the absence of concrete evidence of reputation in individual cases. Free-riding, which entails the unjust exploitation of reputation, presupposes the existence of a reputation. However, where a protected name lacks a reputation, can the risk of free-riding be ruled out, as asserted repeatedly by defendants in numerous cases?Footnote 144 This assumption is not without foundation since reputation is not a prerequisite for registering a name as an EU GI, but only an optional condition for registration.Footnote 145 Although obtaining an AOC in France requires a product to ‘have a duly established reputation (possèdent une notoriété dûment établie)’,Footnote 146 it cannot be inferred from this requirement that all names registered under the EU GI system possess a reputation. Thus, it is not impossible that a protected name lacks a de facto reputation. Despite the lack of reputation, the EUIPO continues to assert the applicability of the anti-evocation clause.Footnote 147. Hence, the question arises: how can the prohibition of evocation be justified based on the prevention of free-riding when the essential prerequisite for free-riding, that is, a reputation, is absent? Drawing an analogy to trademark law, only marks that possess a reputation or are at least ‘sufficiently well known’ are eligible for protection against free-riding.Footnote 148
Even assuming that all GIs enjoy a reputation, it cannot be assumed that they have the same level of reputation. Certain GIs inevitably have a higher reputation than others.Footnote 149 If the presumption is that the higher a GI's reputation, the more likely it will come to consumers' minds,Footnote 150 does it follow that the lower the reputation, the less likely an unlawful evocation will occur? The EUIPO has answered this question negatively on a controversial basis.
Firstly, the EUIPO presumes that all protected GIs have the same level of reputation in the examination of evocation. According to the EUIPO, the assessment of whether an unlawful evocation occurs ‘should be based on equal knowledge by the public of all protected GIs’.Footnote 151 However, this presumption is not accurate, as in reality not all GIs possess the same level of reputation. Thus, the average consumer is more likely to associate with certain GIs than with others.Footnote 152 Notably, even the draft 2023 edition of the EUIPO Guidelines on trademark practice has proposed to delete this presumption.Footnote 153
Secondly, the EUIPO regards GIs as enjoying ‘absolute protection’,Footnote 154 which is not subject to the burden of proving that there is a reputation. As a result, where the reputation of a GI appears weak or absent, the EUIPO holds that the de facto lack of reputation is irrelevant in the examination of evocation.Footnote 155 This rationale selectively ignores the real impact that a low reputation has on consumers' reaction. Conversely, the EUIPO itself admits that a high reputation of the GI favours the conclusion that an unlawful evocation is established.Footnote 156 Then what is the reason to reject the opposite presumption that a low reputation of a GI disfavours the establishment of evocation? Essentially, these two presumptions are two sides of the same coin.
Thirdly, the EUIPO contends that the reputation of a GI cannot be equated with that of a trademark,Footnote 157 as the former is primarily dependent on the image of the GI, which in turn is heavily reliant on the specific characteristics and overall quality of the product.Footnote 158 According to this view, although the reputation of a GI product is not a prerequisite for its protection,Footnote 159 the law presumes that the product's special qualities will gain the product a reputation once it is introduced into the market.Footnote 160 However, this view seems to contradict a previous conclusion of the CJEU, which has emphasized the need for objective evidence to establish the existence of a GI reputation, rather than presuming its existence. The CJEU held that ‘the image or reputation of the appellation of origin will depend significantly on factors which are extraneous to the product itself’, including, among others, ‘the amount of investment in promoting the appellation of origin, how intensive use of the appellation of origin has been, and the market share held by the product’.Footnote 161 The court has excluded the presumption of reputation, reasoning that the GI reputation depends mostly on those extraneous factors and thus cannot be inferred from the GI registration status, but needs to be proved in individual cases.Footnote 162
4.2.3 Limitation II: Undefined Subject of Free-Riding
The lack of clarity surrounding the specific reputation being protected poses an additional challenge to justifying the use of anti-evocation protection as a tool to deter free-riding. This ambiguity is also a contributing factor to the inconsistent application of the anti-evocation clause.
The term ‘reputation’, which is the subject of free-riding or unfair exploitation, has various interpretations,Footnote 163 including ‘positive image’,Footnote 164 ‘attractiveness’,Footnote 165 ‘pulling power’,Footnote 166 and so forth. Reputation can be associated with specific products, particular locations, or their names. In our analysis, reputation is classified into four distinct types based on the subjects to which reputation is attributed. These types include product reputation, product's provenance reputation, general place reputation, and inherent reputation. ‘Product reputation’ refers to the reputation acquired by a product due to its specific characteristics and overall quality. ‘Product's provenance reputation’ specifically focuses on the reputation gained by a place as the origin or source of a particular product. When a product bearing the geographical name of its place of origin gains a reputation (product reputation), the place is likely to be known for being the product's provenance (product's provenance reputation). Product's provenance reputation must be distinguished from ‘general place reputation’, which pertains to the overall perception and recognition of a place, taking into account various factors such as geographical features and economic development. Finally, ‘Inherent reputation’ denotes the reputation associated with the name itself, which conveys a strong message irrespective of specific products or places, often embodying exclusivity, luxury, or other desirable lifestyle attributes.
The lack of clarity on the specific type of reputation being protected hinders the justification of anti-evocation as a means of preventing free-riding, contributing to inconsistencies in its application. According to some EUIPO decisions, the protection of a product's provenance reputation appears to be the focal point, as the finding of unlawful evocation is based on the premise that the GI product's place of provenance is evoked. Examples of unlawful evocation include the use of ‘Emiliana’ to refer to the Emilia regionFootnote 167 and the use of ‘Map of Imola’ to indicate the same geographical origin as the GI ‘Parcels of Imola’,Footnote 168 even in the absence of any connection to the reputation of the GI product.Footnote 169 In the ‘Ca Va’ case, EUIPO clarified that the key question to determine the existence of unlawful evocation is ‘whether the contested mark would evoke a geographical origin which a GI is associated with’.Footnote 170 The importance of evoking the place of provenance is rooted in the belief that the place is linked to a certain level of quality, reputation, or other distinguishing characteristics of the product, as explained in the ‘Toro’ case.Footnote 171 This view is consistent with the French terroir philosophy, which was endorsed by AG Cosmas in the ‘Windsurfing Chiemsee’ case. According to AG Cosmas, a product's geographical origin may ‘confer on it a specific quality and specific characteristics of such a nature as to distinguish it from all other products’.Footnote 172
In the CJEU ‘Queso Manchego’ case, it seems that the reputation associated with the geographical area in question, La Mancha, primarily relates to its ‘general place reputation’ rather than the specific product's provenance reputation. The CJEU in Queso Manchego considered that ‘the use of signs evoking the geographical area with which a designation of origin is associated’ may constitute unlawful evocation of that designation.Footnote 173 However, the reputation of La Mancha extends beyond its role as the provenance of the ‘Queso Manchego’ cheese and includes its landscapes and association with the renowned novel ‘Don Quixote de la Mancha’ by Miguel de Cervantes.Footnote 174
In contrast, preventing the unfair exploitation of product reputation rather than product's provenance reputation or general place reputation appears to be the focus in another part of the EUIPO decisions. The EUIPO has held that evoking the place of origin alone is not enough to constitute unlawful evocation. Instead, the image of the GI product needs to be evoked. For instance, names such as ‘Mui Gin Born in Porto’,Footnote 175 ‘Is Fence’,Footnote 176 ‘La Manche’,Footnote 177 and ‘Douro Atlantic Garden’Footnote 178 did not constitute evocation because they evoked the city of Porto, Valencia, the Spanish region of La Mancha, or the river Douro, respectively, and would not trigger in the consumer's mind the image of the corresponding GI products. As the EUIPO commented in a recent case, the use of ‘La Menorquina’ would only project the image of the island of Menorca in the consumer's mind, and not the cheese protected by the GI ‘Mah-in Menorca’.Footnote 179 The transition in judging criteria from evoking origin to evoking product implies a potential reorientation of the focus of protection, moving from product's provenance reputation (the image of the product's provenance) to product's reputation (the image of the GI product).
The CJEU ‘Glen’ case has led to a growing body of EUIPO decisions that considers the mere fact that a name relates to a geographical origin of the goods as insufficient to constitute infringement. In the ‘Glen’ case, the CJEU provided a more restrictive interpretation compared to the ‘Queso Manchego’ case.Footnote 180 The CJEU clarified that in order for unlawful evocation to be established, it is not sufficient for ‘the disputed element of the sign at issue should evoke in the relevant public some kind of association with the protected geographical indication or the geographical area relating thereto’, ‘as it does not establish a sufficiently clear and direct link between that element and the indication concerned’.Footnote 181
When the rationale behind anti-evocation is regarded as safeguarding ‘product reputation’, the key factor in determining the comparability of the products is the influence of GI products on consumers’ purchasing decisions. This approach differs from the one taken under the rationale of preventing confusion, as explained in Section 4.1. Under the latter rationale, product comparability is a prerequisite for infringement and is determined by assessing the comparison of objective physical characteristics. The premise is that consumers are less likely to mistake one product for another if the products' physical features are distinguishable.Footnote 182 In contrast, when the interest is in safeguarding ‘product reputation’, comparable products are defined in terms of market impact rather than extrinsic features.Footnote 183 For instance, the products covered by the GIs ‘Cítricos Valencianos’Footnote 184 and ‘Recioto di Soave’Footnote 185 are considered comparable to the disputed products as they may serve as commercially important ingredients for the contested products and thus influence consumer preferences towards them. The market impact factor is considered in order to prevent the disputed products from capitalizing on the reputation of the GI products.Footnote 186
It is noteworthy that the judgment in the ‘Champanillo’ case rendered in 2021 rejects the approach of considering product comparability as a necessary condition for establishing evocation. The CJEU holds that ‘the notion of “evocation” … does not require the product covered under the PDO and the product or service covered by the contested name to be identical or similar’.Footnote 187 Following the ‘Champanillo’ case, the EUIPO also acknowledges that the absence of comparability between products is not enough to exclude the possibility of evocation.Footnote 188 The diminishing importance of product comparability may indicate a belief in safeguarding the ‘reputation derived from the quality of these products’,Footnote 189 even when the reputation transcends the boundaries of specific product categories (beyond the principle of specialty).
In some EUIPO decisions, particular importance seems to be placed on the ‘inherent reputation’ of the protected names, as suggested by the reliance on the similarity of the names in determining the presence of evocation. When a disputed name bears resemblance to a GI, either due to common wordsFootnote 190 or because the disputed name contains all or part of the GI,Footnote 191 unlawful evocation is established. In contrast, if the disputed name does not contain the GIFootnote 192 or has no common points in words,Footnote 193 evocation is excluded. This test primarily assesses the similarity between the disputed name and the protected name,Footnote 194 which can yield different outcomes compared to a test that primarily focuses on the specific evocation of a particular GI product. In cases where the disputed name (e.g., ‘la Menorquina’) resembles both the protected name (‘Mah-Menorca’) and a place name (‘Menorca’), the association generated may primarily relate to the place rather than a specific product.Footnote 195 This type of association, which could be regarded as unlawful evocation in a test primarily focused on the similarity between names, may not be deemed as unlawful in a test primarily centred on the specific evocation of a particular GI product.
The outcome of a decision may differ depending on the type of reputation being targeted. In addition, it is highly doubtful how the unfair exploitation of reputation can be demonstrated, especially when it is unclear which type of reputation is at stake.
4.2.4 Limitation III: False Presumption of ‘Unfair Exploitation’
The lack of demonstration of the ‘unfair exploitation’ of reputation in the application of anti-evocation protection exposes another weakness in the anti-free-riding argument. If the objective of the anti-evocation protection is to safeguard GIs against exploitative uses, then the use of signs evocative of GIs should only be prohibited when it poses a genuine risk of free-riding.Footnote 196 However, under the evocation clause, there appears to be no need to demonstrate that a third party's use evoking the GI would result in a risk of unfair exploitation of the GI's reputation. Instead, evocation is presumed to confer an unfair advantage. As noted by AG Sánchez-Bordona in Champagner Sorbet, evocation suggests a ‘presumed intention to exploit that reputation’.Footnote 197
However, the presumption that evocation constitutes unfair exploitation of reputation may not be universally substantiated by empirical evidence. While free-riding relies on evocation, as it is not possible to transfer a positive image without a prior mental association with the protected name or product,Footnote 198 mere mental association does not necessarily lead to an unfair exploitation of reputation.Footnote 199 For example, the use of the wine grape variety name ‘Teran’, which has been used for marketing Croatian wines prior to the Republic of Croatia's accession to the EU, may evoke the Slovenian GI wine with the same name. Nevertheless, the CJEU did not consider the labelling practices established historically in Croatia as taking undue advantage of the reputation of the Slovenian GI ‘Teran’.Footnote 200
Even if acknowledging that any mental association with a GI would necessarily enable third parties to take advantage of the GI's reputation, it could not be said that advantage must always be classified as ‘unfair’. In some cases, the public interest should be taken into consideration to assess the fairness, in addition to the private benefit to third parties. For instance, evoking a GI in comparative advertising may confer an advantage to a third party by establishing a ‘link’ with the GI's reputation. However, that advantage may be regarded as ‘inherent in the very nature of the phenomenon known as comparative advertising’.Footnote 201 In other words, it does not have to be classified as ‘unfair’ when the benefit of the comparative advertising to consumers is balanced against the advantage to the advertiser.Footnote 202
Similarly, it does not seem unfair if a practice evoking a GI is the normal practice of the relevant trade or industry. In the foodstuff industry that incorporates GI products as ingredients, explicitly and subtly referring to the GI to communicate ingredient information to customers is not necessarily categorized as unfair.Footnote 203 In the sparkling wine industry, the common product features (i.e., the bubbles) present in Prosecco wine or Cava wine would elicit a psychological association with Champagne wine. However, these customary practices have not been deemed as unlawful evocation or as exploiting the esteemed reputation of ‘Champagne’.Footnote 204 Likewise, the traditional practice of selling ‘downgraded’ (déclassé) products or ‘second wine’ (seconds vins) that began in the eighteenth century has not been regarded as free-riding on the GI products' reputation, despite using the appearance of those GI products that might be highly evocative.Footnote 205
Moreover, the lack of clarity regarding the specific type of reputation that anti-evocation protection targets (i.e., product reputation? product's provenance reputation? general place reputation? or inherent reputation?Footnote 206) poses further challenges to the general presumption of ‘unfair exploitation’. The issue of whether the exploitation of any particular type of reputation is justifiable or permissible remains unaddressed. The anti-free-riding argument falls short in providing an explanation as to why ‘product's provenance reputation’ or even ‘general place reputation’ should be the exclusive domain of GI groups and why third parties’ use of place reputation should be deemed unfair. Conversely, it could be argued that a GI cannot legitimately appropriate all reputations or all identifying elements of a region.Footnote 207
This difficulty in justification is similarly encountered in the context of ‘product reputation’. It is not a self-evident principle that product reputation should be solely attributed to GI groups, particularly in cases where the reputation has been established over a long period of time, rather than through the recent efforts of the GI group members. Assuming the vigorous assertion made by the defendant Livradois in the ‘Morbier’ case holds trueFootnote 208 – that the reputation of ‘Morbier’ cheese arises from its distinctive features and historical tradition, such as the ashy stripe, which Livradois implemented prior to ‘Morbier’ being registered as a GI, and is not based on investments made by the GI group or its members – the question arises as to whether Livradois' continued exploitation of this product reputation, which partly due to Livradois' own historical efforts, warrants an assessment of its fairness.
Moreover, one could even argue that newly emerging GI groups are free-riding on the established reputation that has resulted from the efforts of traditional producers who may not necessarily be affiliated with the groups.Footnote 209 During the gradual development of the modern GI law in the early 1920s, there existed an argument emphasizing the significance of granting benefits and protection to those who contribute to the value and reputation of GIs. This perspective recognized that the GI reputation is established over time through the collaborative efforts of producers and communities linked to the specific geographic region. It was strongly believed that these stakeholders should have the opportunity to receive the advantages and safeguards provided by the recognition of GIs.Footnote 210 If this argument still holds merit, it is not the traditional producers who reap the benefits without effort, but rather the producers who have recently joined the institutionalized GI mechanism.
The practice of trademark law, which is similar to GI law in governing distinctive signs, demonstrates that creating a mental association does not necessarily result in a real change in consumer behaviour. Even if consumer behaviour changes, the change may not necessarily be unfair since competition in the market is primarily focused on attracting and retaining consumers.Footnote 211 However, the anti-free-riding argument made in the context of GI protection against evocation seemingly presumes the contrary – that evocation will automatically lead to the unfair exploitation of reputation. Such a flawed presumption implies that the anti-evocation clause will ban evocative uses that are not likely to create the free-riding problem, which, in turn, suggests that the anti-evocation protection exceeds the necessary need for banning free-riding.
4.2.5 Limitation IV: Controversy of the Social Desirability of Prohibiting Free-Riding
The very basic issue of whether a ban on free-riding is socially desirable is itself a matter of dispute. For some, reputation, as a legitimate source of profit and an economic value in the contemporary world, belongs to the producer who invested in it. Letting third parties grab the fruit of the producer's labour would thus be unfair.Footnote 212 For others, free-riding, without more, is ubiquitousFootnote 213 and, under certain conditions, may prove to be both necessary and desirable to achieve an efficient allocation of resources.Footnote 214 Examples are given: planting attractive flowers in front garden benefits neighbours, but this does not mean the neighbours should compensate for the increased value; the society may benefit without compensation from a person's decision to educate his children well, making them productive and law-abiding.Footnote 215 It is deduced that everyone is a beneficiary of free-riding. Consequently, free-riding is described as ‘a ubiquitous boon for society’Footnote 216 and regarded as insufficient to justify government intervention to enable the investors to capture all or even most of the social benefit of their investment.Footnote 217 Then how the goal of preventing free-riding can provide a solid basis of justification for anti-evocation, if preventing free-riding is itself a controversial idea?
In conclusion to Section 4.2, the justification of anti-evocation based on the need to prevent free-riding raises more problems than it resolves. Firstly, preventing free-riding presupposes the existence of a reputation, but not all GIs have an equivalent association-provoking reputation. Secondly, it fails to clarify which types of reputations are protected from unfair exploitation, leading to inconsistencies in judgments and decreasing the predictability of the law. Thirdly, the ability to demonstrate the factual elements of free-riding in enforcement proceedings is still in doubt. Finally, even the fundamental issue of whether preventing free-riding is socially desirable remains a contentious topic.
4.3 Bad Faith
In supporting their rulings against evocation, certain enforcement authorities tend to emphasize the defendant's intention in their analysis. This entails examining the similarity between the names not as an accidental occurrence, but rather as a deliberate choice. In the case of ‘Cambozola’, the CJEU deemed it appropriate for national courts to consider any advertising material that suggests the phonetic similarity between the two names is not fortuitous. In Queso Manchego and Morbier, AG Pitruzzella suggested the assessment of unlawful evocation should consider whether the reference to the GI product was intentional.Footnote 218 The emphasis placed on intention may reflect a belief that deliberately deceiving others or benefiting from their work without proper compensation is unacceptable.
Accordingly, in determining the presence of unlawful evocation, law enforcement authorities have identified the defendant's intent to create confusion or benefit from the established GI reputation as a factor. In cases concerning ‘La Châsse du Pape’,Footnote 219 ‘Héritages des Caves des Papes’,Footnote 220 and ‘La Croix des Papes’,Footnote 221 the authorities held that the presence of the term ‘Pape’ in the disputed trademark was not accidental, but rather an attempt to subtly evoke the prestigious name or, at the minimum, to exploit a certain linguistic ambiguity. In Darjeeling, the Paris Court of Appeal addressed in particular that by registering the name ‘Darjeeling’ for books, the applicant's intention was to leverage the reputation associated with the GI.Footnote 222
Some EUIPO cases have even elevated the significance of intention to the level of a necessary condition. Such cases argue that the absence of evidence showing that the relationship between the two names was not fortuitous means that there is no conceptual connection, hence no evocation.Footnote 223 Even more so, some authorities have declined to recognize the presence of evocation based on the assumption of a remote possibility of malicious intent. The French Supreme Court opined that ‘Wel Scotch’ would not lead consumers to associate it with ‘Scotch Whisky’, considering that the ‘Wel Scotch’ trademark was filed in 1958, 30 years prior to the marked increase in popularity and consumption of whisky in France.Footnote 224 The court inferred from this temporal relationship that the registration of ‘Wel Scotch’ was not intended to create confusion with ‘Scotch whisky’.
However, targeting bad faith as a basis for justifying anti-evocation protection appears to be questionable in instances where the absence of bad faith can be established or when good faith can be demonstrated. The EUIPO recognizes that it is possible for a trademark applicant to unintentionally create a sign that closely resembles a GI.Footnote 225 Nonetheless, the absence of intention does not absolve an applicant from liability for violating the anti-evocation clause. It is expected that when selecting a trademark, the applicant should conduct a thorough research process to ensure that the chosen sign does not ‘objectively’ evoke any existing GIs.Footnote 226 As a result, the element of bad faith loses its significance in the evaluation of evocation, and its capacity to provide a rationale for anti-evocation measures is constrained.
4.4 Achievement of ‘More General Objectives’
An increasingly employed argument for justifying a ban on evocation is not to emphasize the harm or bad faith associated with evocation, but rather the benefits derived from its prohibition. The advantages of prohibiting evocation have been interpreted by the CJEU in multiple cases and have been progressively extended far beyond the initial interpretation of reducing consumer search costs.
In Cognac, the CJEU described the benefit of prohibiting acts such as evocation as maintaining the identification function of GIs, i.e., allowing consumers to identify products originating in a particular region with regional characteristics by their place names, thereby reducing consumer search costs.Footnote 227 A similar rationale has traditionally been used to justify trademark protection, i.e., to reduce consumer search costs by allowing consumers to rely on trademarks to identify products that originate from a particular firm or have a desired characteristic. The benefit of reduced search costs has been used under trademark law to justify the prohibition of identical or confusingly similar names, as allowing other businesses to use a mark such as ‘Coca-Cola’ would render it less reliable for consumers seeking a particular item with specific characteristics and quality.Footnote 228 However, the same reasoning used to justify the prohibition of evocation under the GI law is far-fetched. If the consumer is well aware that a name evoking a GI is not that GI, that name is not likely to distract the consumer from relying on the GI to find the product desired. Thus, the need arises to find additional benefits to justify the prohibition of evocation.
In the ‘Viiniverla’ case, the CJEU expanded the hierarchy of benefits of prohibiting conduct such as evocation, in addition to recognizing the benefit of maintaining the identification function mentioned in Cognac. The benefits were amplified to include the prevention of deceptive practices, the attainment of market transparency and fair competition, and the attainment of a high level of consumer protection.Footnote 229 These additionally articulated interests were summarized by AG Saugmandsgaard Øe as the ‘more general objectives’.Footnote 230
AG Pitruzzella expounded on the ‘more general objectives’ in Queso Manchego and Morbier. In Queso Manchego, AG Pitruzzella observed that the tendency to interpret ‘evocation’ broadly is in line with the public interest aspect of the objective of protecting GIs, which not only constitutes part of the strategy of the EU economy, but also forms part of the objective of safeguarding European cultural heritage.Footnote 231 In Morbier, in addition to highlighting the benefit of maintaining the function of identification, AG Pitruzzella listed other advantages to consumers resulting from GI protection (including anti-evocation protection). These benefits include meeting consumers' expectations regarding the quality of products covered by those names and safeguarding their right to receive truthful commercial information. Moreover, AG Pitruzzella also noted that the prohibition of evocation, among others, could provide an incentive model which relates directly to objectives relating to agricultural policy and the protection of common cultural heritage.Footnote 232
Behind the ever-expansive reading of the benefits of anti-evocation protection, the underlying logic may be that more benefits can justify a greater scope of protection. Following this logic, the idea arises that banning evocation is justified because it leads to greater benefits. The major issue with this line of reasoning is that it overlooks the question of how much greater the benefit will be. There is no empirical evidence demonstrating the extent to which banning evocation would better achieve the ‘more general objectives’ of protecting GIs. For instance, while it may be true that the objective of ensuring that consumers have clear, concise, and reliable information regarding the origin of the product is better served by prohibiting the use of figurative signs that evoke the registered name, as speculated by the CJEU in Queso Manchego,Footnote 233 it has not been shown to what extent banning images resembling Don Quixote de La Mancha will further enhance the guarantee of the word ‘Queso Manchego’ as a quality indicator.
Moreover, this line of reasoning neglects to assess the costs associated with achieving the purported benefits, nor does it evaluate whether the proportionality between benefits and costs is reasonable. There is a growing body of cases showing that the costs associated with banning evocation are substantial.Footnote 234 It seems contrary to the principle of proportionality to achieve goals regardless of cost. The benefit-based justification ignores a key question: Do the benefits of anti-evocation protection as a policy of intervening in free competition really outweigh the costs?
4.5 Trespass
In recent years, a growing trend has been observed towards the mechanical application of the anti-evocation clause. Certain authorities directly label a use as infringing if it has the potential to evoke a protected name or product in the consumer's perception. This approach often overlooks the resulting harm, the intentions of the user, and the potential broader goals that could be achieved by prohibiting the use.Footnote 235 As a result, the rational basis for a finding of infringement is no longer adequately addressed.
The shift in attention from the search for justification to the ignoring of it may be attributed to the fact that enforcement authorities previously focused on justification as a response to the unclear protection boundary defined by an unfamiliar evocation test. As the boundary becomes clearer with repeated procedures on anti-evocation protection, authorities no longer need to search for justification in a state of uncertainty. As a consequence, anti-evocation cases have created a ‘property right’ on anything that reminds one of GIs, and any attempt at evocation is now considered a ‘trespass’.
The concept that trespassing on a property is inherently wrong does not offer a compelling justification for anti-evocation protection. This reasoning fails to address the underlying question of why a property right should be established in this manner or why such a wide-ranging scope of exclusive rights should be granted in the first place.
Furthermore, as rights holders have become accustomed to what was once in the public domain becoming exclusive property, any attempt to narrow the scope of the anti-evocation protection may be met with challenge and resistance.Footnote 236 This challenge is evident in the discussion of the 2022 reform of the EU GI regulation, where the EC provided a definition of evocation that aims to more clearly delineate the boundary of the anti-evocation prohibition. The suggested definition of evocation explicitly lists three types of harm:
the evocation of a geographical indication shall arise, in particular, where a term, sign, or other labelling or packaging device presents a direct and clear link with the product covered by the registered geographical indication in the mind of the reasonably circumspect consumer, thereby exploiting, weakening, diluting or being detrimental to the reputation of the registered name.Footnote 237 (emphasis added)
If this proposal is adopted, the explicitly listed three types of reputational harm would become crucial in determining whether an unlawful evocation has occurred. This could potentially narrow down the boundary of anti-evocation to acts that cause reputational damage,Footnote 238 thus making the protection against evocation more justifiable from the perspective of safeguarding reputation. However, opponents of this definition argue that it would weaken the existing scope of protection. During the first reading in Parliament, several members of the responsible committee proposed deleting the definition,Footnote 239 stating that including a definition of evocation ‘may restrict protection of geographical indications’Footnote 240 and limit the scope of anti-evocation ‘to only where the use exploits, weakens, dilutes, or is detrimental to the reputation of the GI name’.Footnote 241 During the EU Council's first reading, several delegations similarly argued for the deletion of the definition. They expressed a preference for not legislating on this concept and relying solely on case lawFootnote 242 to ‘avoid restricting the European Court of Justice in its work’.Footnote 243 This reasoning indicates an acceptance of the current broad scope of protection established by CJEU case law and a reluctance to impose any restrictions on it. However, it is crucial to emphasize that the justification for the current scope of protection still remains unestablished.
5. Where We Go from Here: Conclusion and Recommendation
Generally, the grant of exclusive rights to one party, including those granted by the anti-evocation clause, can potentially limit the choices of other parties in terms of expression and competition. The crucial question is whether these exclusive rights are justified.
This article has examined the justifications for anti-evocation for GIs put forth by law enforcement authorities and identified two types of drawbacks the justifications exhibit. The first type is the varied justifications that exist due to different authorities having different understandings of why evocation should be prohibited. This diversity of justifications for anti-evocation protection leads to inconsistencies in determining illegal evocation, resulting in errors in its application. The second type is the lack of substantiation for the justifications for anti-evocation protection. The weak and insufficient justifications imply that the restrictions imposed on other market players may be unjustified, unnecessary, and disproportionate to the objectives of anti-evocation protection. As AG Jacobs cautioned two decades ago when commenting on the first CJEU case on the anti-evocation protection (the ‘Cambozola’ case):
It should be borne in mind that, as is the case with trade marks, an unduly high level of protection of geographical indications and designations of origin would impede the integration of national markets by imposing unjustified restrictions on the free flow of goods.Footnote 244
It is important to consider the impact on non-GI market players, especially those operating within the geographic area associated with the GI but not officially part of the GI scheme. When the restrictions imposed on them cannot be sufficiently justified, it raises concerns that their development might be unreasonably limited. GI producers are not ‘the one and only representatives of the EU rural economy’.Footnote 245 Non-GI producers also contribute significantly to rural development, and their growth and progress should be encouraged by policies rather than unjustifiably hindered by them.Footnote 246
Moreover, law enforcers have gradually adapted to expanded protection, leading to the mechanical application of the anti-evocation clause without considering the justification basis. This blind application may further exacerbate the current problem of restricting the freedom of operation of other market players, particularly agricultural companies operating in the EU's rural economy.
Therefore, it is essential for the EU to acknowledge the weaknesses in the justification for anti-evocation and avoid imposing unjustified restrictions or inconvenience on other market participants. Clarification of the rationale for anti-evocation protection is necessary to eliminate ambiguity, which can result in multiple interpretations and inconsistent standards of adjudication. This, in turn, would prevent enforcement errors and inconsistencies in decision-making. Additionally, re-examining the scope of anti-evocation protection is crucial. A well-defined scope of protection, supported by solid justifications, should be clearly delineated to prevent unnecessary impact on the public interest. The ongoing legislative reform of the EU GI regulations presents an opportunity to address these issues.Footnote 247
For other countries that have followed the EU in prohibiting evocation or for those considering adopting anti-evocation protection, caution is necessary to prevent similar dangers. Notably, while the EU is taking steps to rectify its mistakes by clarifying the concept of evocation, other countries need not replicate these errors.
Acknowledgements
The author wishes to thank the anonymous reviewers for their helpful comments and suggestions. The support of the China National Social Science Foundation (21CFX080) is gratefully acknowledged.
