French Supreme Court issues decision in Morbier case following CJEU’s preliminary ruling



Par Richard Milchior, le 27 juillet 2021


Article publié dans World Trademark Review

– Late last year the CJEU issued a preliminary ruling concerning the reproduction of the shape or appearance of a PDO-protected product (here, Morbier cheese)

– The CJEU held that EU law prohibits such reproduction in certain circumstances

– The French Supreme Court has now issued its decision taking the CJEU’s answers into consideration



On 17 December 2020 the Court of Justice of the European Union (CJEU), in Case C-490/19, issued a preliminary ruling on some questions raised by the Cour de Cassation (the French Supreme Court) concerning the protection of the shape of a cheese (here, Morbier) when that cheese is also covered by a protected designation of origin (PDO).
The answer given by the CJEU was quickly used by the Cour de Cassation, which rendered its final ruling on 14 April 2021 (Case 17-25.822).



The court had to answer two series of questions raised by the plaintiff. It did so by taking the decision of the CJEU into consideration.


First claim

The first claim was solved by indirectly taking into consideration the answer of the CJEU.
At issue was whether, in order to decide the case in France between two French entities, one should take into account the fact that one of these entities had renewed, in the United States, a mark which consisted of the name of the cheese and, therefore, of the PDO.
The court stated that this was irrelevant since an action in the United States could not create a risk of evocation among European (and not only French) consumers.


Second claim

The second claim was directly related to the questions referred to the CJEU.
The court quoted the answer of the CJEU and recalled the contested decision of the Court of Appeal in the underlying proceedings, which did not accept that the protection granted by a PDO extended to the shape of a cheese.
The Cour de Cassation decided that the protection afforded by a PDO extends not only to the use of the denomination itself, but also to the reproduction of the appearance or the shape of the product protected by that PDO, when such reproduction may create confusion among consumers and may mislead them into thinking that the other product is also covered by the PDO.
The Cour de Cassation found that the Court of Appeal had erred since:

– it had not assessed whether the blue stripe of the Morbier cheese was a characteristic and was particularly distinctive of that type of cheese; and

– in case of an affirmative answer, it had not considered whether the reproduction of the shape of the cheese, combined with all relevant factors of the case, could mislead consumers as to the origin of the product.

The Court of Appeal’s decision was thus quashed.



Interestingly, the decision was not remanded to another court of appeal but quashed. This confirms the first-instance judgment, which becomes final except for some minor procedural points.



This article first appeared on WTR Daily, part of World Trademark Review, in july 2021. For further information, please go to