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 final decision in the long-running Feta dispute,1
which had been ripening for close to two decades. The
court upheld the European Commissions finding that
Feta was not a commonly used or generic term for a
type of white cheese in brine, instead designating cheese
with a specific 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 defined 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 verified as of February
17, 2007).
3 According to Advocate General Colomer in Canadane Cheese
Trading AMBA and Adelfi G. Kouri Anonymos Emoriki Kai
Viomichaniki Etaireia v Hellenic Republic (C317/95) [1997]
E.C.R. I4681 at [28] (AG). (Canadene AG).

reflect 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 justified?
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 first 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 first 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
significant volume of Feta production outside Greece
for several decades, yet the court ultimately upheld the
Commissions finding that the term was non-generic.
The aim is to discover why this initially significant
evidentiary finding 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 specific 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 magnified 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 specified 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 Scientific 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 significant 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 artificial 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 Scientific Committee
for Designations of Origin, Geographical Indications and
Certificates of Specific 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 significant Feta production outside
Greece reflect 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-filtration 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 specifications 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 specification 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 simplified

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 significant 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
final 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 difficult 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-filtration) were sufficient 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 defined
status under Greek law, a Eurobarometer survey in
1994 which demonstrated its geographical significance
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 sufficient 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 justifiable 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 justified on similar grounds); Minist`ere Public v Gerard
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 justified 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 Confiserie 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
sufficient 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 definition of a PDO; and (2) that it is a
generic term, for the Commission had not adequately
considered the evidence. The first 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 first 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 defined 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 specified limbs, additional grounds were
also raised.53
The defence was that giving priority to the situation
in the home country was justified. This best reflected
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 specific 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 finding of fact; it did not inexorably suggest
generic use.57 This labelling was possibly considered
opportunistic, rather than reflecting 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 conflicting 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 reflect an approach specific
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 significant 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 conflict 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).

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 Scientific 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.

(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 Scientific Committee72
which acknowledged that both production and
consumption of Feta was significantly concentrated
in Greece.73
The drafting history reveals that the proposed Regulation was finally 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
finding 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
specific 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 Scientific
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 first
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].

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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 Scientific 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 specific geographical connotations. However
in Denmark, the name was found to be generic.83
Lacking any specific 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.

The court thus inferred that general consumers perceive

Feta as a cheese associated with Greece.85 This
led to an overall finding that Feta consumption
practices indicated non-generic use.86 Finally national
and community legislation was insufficiently 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 fortified 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 specific legislation and even
in Denmark, the legislation referred to Danish feta, implying
that Feta by itself retained a Greek connotation; ibid., [88],
[91][92].

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 influenced 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 infiltrated the
Art.3(1) analysis with grave consequences.
Beginning with the less controversial implications,
the reconfigured 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 conflated 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
final analysis.
However the unfair competition agenda emerges upon
revisiting the tipping point test advocated by the
Scientific Committee.93 Feta is not generic so long as a
significant 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 Conference
Internationale pour la Protection de la Propriete Industrielle (2nd edn,
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.

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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
justifications, 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 confirmed 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 clarified 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 define
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 definition 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 indefinitely, 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? Conflicts
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 certification 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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specifically 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 specifically. 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 significant 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 specific 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 fig leaf of consumer protection is easily
blown aside by sufficiently 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 influence on European registered GI
law is long overdue. GIs have the potential to benefit
those otherwise marginalised by the intellectual property
system and a convincing epistemological consensus
is the first step towards fulfilling this potential in a
defensible manner.

108 It broadly refers to benefits 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.

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