The shape of a mini sausage is not an evocation of PGI “Nürnberger Rostbratwürste”

Background

“Nürnberger Rostbratwürste” (literally, “Nurember grilled sausage”) is a PGI from Germany, registered in 2002. According to the product specifications (i.e. registration documents), this is a PGI for a “7-9 cm long sausage”.

In 2022, producers of PGI “Nürnberger Rostbratwürste” sued a competitor who was producing mini sausages outside the Nurember area (hence, ineligible for the PGI). The defendant sold these mini sausages under the name of “Mini Rostbratwürstchen” in the packaging shown above. The defendant’s sausages are approximately 9 cm long.

PGI “Nürnberger Rostbratwürste”, relying on the previous Regulation (EU) 1151/2012, argued that the size and the shape of these mini sausages infringed its rights to the PGI in that:

• the name, the packaging and the online advertising of “Mini Rostbratwürstchen” is an evocation of PGI “Nürnberger Rostbratwürste” (Art. 13(1)(b), now Art. 26(1)(b) Regulation (EU) 2024/1143);
• the packaging of “Mini Rostbratwürstchen” is misleading as to the product’s provenance (Art. 13(1)(c), now Art. 26(1)(b));
• the product presentation of “Mini Rostbratwürstchen” also falls under any other practice liable to mislead the consumer as to the true origin of the product (Art. 13(1)(d), now Art. 26(1)(d)).

In its ruling, LG München applied Regulation (EU) 2024/1143 as the one being in force at the date of the pronouncement of the judgment.

LG München dismissed the lawsuit in its entirety. The court’s reasoning essentially focused on whether reproducing the product’s shape may be considered evocation and misleading practice under Regulation (EU) 2024/1143.

The plaintiff challenged the name, the packaging (depicting mini sausages) and the online advertising (depicting mini sausages served on a plate with white bread, sauerkraut and mustard)) of “Mini Rostbratwürstchen” as being an evocation of PGI “Nürnberger Rostbratwürste”.

In terms of name, the court relied on the Court of Justice’s (CJEU) ruling in C-432/18 concerning the PGI “Aceto Balsamico di Modena” [see The IPKat here]. In the view of the court, the scope of protection of PGI “Nürnberger Rostbratwürste” is determined primarily by the indication of origin “Nürnberg” and not by the generic designation “Rostbratwürste”. As such, “Mini Rostbratwürstchen” does not evoke PGI “Nürnberger Rostbratwürste”.

To decide on other allegations of evocation, the court considered whether the size and the shape of mini sausages was in itself an evocation of PGI “Nürnberger Rostbratwürste”.

To do so, LG München relied on the CJEU’s jurisprudence on evocation, primarily on the ruling in C-490/19 concerning the shape of the Morbier cheese. LG München reminded that in the Morbier ruling the CJEU suggested applying Art. 13(1)(d) “misleading practices”, and not Art. 13(1)(b) “evocation”.

According to LG München, an evocation may indeed be found on the basis of a product’s shape but this requires that the shape is expressly mentioned in the protected name and is also described in the product specification. This is not the case of PGI “Nürnberger Rostbratwürste”. Thus, the defendant’s acts did not amount to evocation.

In the view of the court, the contested product presentation does not constitute a misleading practice within the meaning of Art. 26(1)(d) Regulation 2014/1143 either. Here, too, LG München relied on the CJEU’s ruling in Morbier. Accordingly, an element of appearance of the product (such as its size and shape) may be covered by Art. 26(1)(d) if that element constitutes a baseline characteristic which is particularly distinctive of that product (para. 40).

LG München then analysed whether the small size of PGI “Nürnberger Rostbratwürste” may be seen as its particularly distinctive baseline characteristic. The court considered a significant number of other sausages in the German market that are sold in small sizes. This, in the opinion of the court, indicates that this size and shape became “generic”, that is, the opposite of being particularly distinctive. In the absence of such as baseline characteristic, the defendant’s acts do not amount to infringement of Art. 26(1)(d) Regulation 2014/1143.

As our readers might have noticed, this case is quite similar to the French litigation concerning the shape of the Morbier cheese [see The IPKat here]. The corresponding ruling from the CJEU focused on “misleading practices” and did not specify whether a product’s shape may be considered evocation.

However, some useful guidance may be found in the Advocate General’s (AG) Opinion in that same case. There, AG Pitruzzella advised that an element (such as the product’s shape) may only constitute evocation if it appears in the product specifications. This, stated the AG, is needed to achieve legal certainty (para. 43 AG Opinion).

LG München went even further and stated that a shape may only constitute evocation, if it appears in both the PGI name and in its product specification (para. 44 of 33 O 4023/23).

While it seems that in other countries almost any conduct can be considered evocation, Germany is stricter in its approaches to the (over-broad) notion of evocation. If confirmed that at the EU level such an approach would allow setting limits to what evocation really is.

Only one example fitting the requirements of LG München comes to this Kat’s mind: the Spanish cheese Tetilla (“small breast”), shaped in the form of breasts. Back in 2013, the Alicante Appeal Court found that a competitor’s breast-shaped cheese was an evocation of Tetilla, paving the way for further litigation over the evocative shape of products throughout the European Union.