Pecorino and Cacio are two radically different cheeses.
The Supreme Court expressed this view in a very recent ruling of 20th March 2023, confirming what already stated by the Court of Appeal of Rome in 2019. The legal action had been initiated by the Consortium for the protection of Pecorino Romano DOP cheese against the dairy company Formaggi Boccea S.r.l. (producer of Cacio Romano cheese), the latter supported in the proceedings by the Lazio Region and Coldiretti Lazio.

The Supreme Court’s considerations revolved around the question of the applicability of the European Regulation 510/06 of 20 March 2006 – concerning the protection of geographical indications and designations of origin for agricultural products and food products – with specific reference to Articles 13 and 14, which respectively discipline the protection of registered names and the relationship between the latter and any conflicting prior or subsequent trademarks. According to the Italian Supreme Court, “the situation of conflict between the two signs (PDO and trademark), contemplated in the European law, presupposes (…) that they have as their object the same type of product, a presupposition in the absence of which the holder of the PDO cannot invoke the protection afforded by reg. no. 510/06”.

The core of the issue, therefore, lays in the meaning of the expression “same type of product”: according to the Consortium, in particular, the reference had to be made to the Nice Classification, for which both products – cheeses – would fall within class 29. The Supreme Court, however, considered this approach to be incorrect: “the reference to the classes of goods in the Nice Classification is certainly pertinent when the signs in conflict are both trademarks, but it is not pertinent at all when the comparison must be made between a protected designation of origin (PDO) and a trademark”.

The reasoning originates from Recital no. 10 of Reg. 510/06, according to which “An agricultural product or food product benefiting from one of the above-mentioned types of reference should meet certain conditions listed in a specification”. Articles 4 and 5 of the regulation also refer to the “specification”: this document must include, inter alia, the description of the product “by indication of the raw materials, where appropriate, and the principal physical, chemical, microbiological or organoleptic characteristics”. The scope of the protection guaranteed by the European legislation, therefore, must be considered limited by the description that has been provided of the product, as an index of an objective nature for carrying out investigations regarding affinity or similarity with other products. The analysis, therefore, must take into account the qualities of the product that are perceptible through one or more sense organs (e.g. aroma, taste, texture).

In the present case, in fact, the Court of Appeal had held that the products were radically different: Pecorino Romano was defined as “an aromatic, piquant, hard or cooked cheese, basically used as a grating cheese”, while Cacio Romano was defined as “a mild, semi-mature cheese, which cannot be grated and therefore only used as a table cheese”. The Consortium had objected that while there were more matured variants of Cacio – therefore more aromatic and almost grated – there could also be less matured forms of Pecorino – not hard and used as a table cheese. There would therefore be an “at least partial overlap” between the two cheeses distinguished by the signs in contention.

In light of the above, however, the Italian Supreme Court held that the Consortium, “in order to benefit from the legal protection afforded by its membership of a registered PDO, would have had to prove, since it was the subject of the dispute, the organoleptic characteristics of Pecorino Romano that it had documentally described in the “specification” [… ] and, consequently, prove that it had applied for protection under the PDO of “Pecorino Romano” also in the different semi-matured consistency (as well as matured with hard or cooked texture), and with the different sweet (as well as aromatic and spicy) flavour”. In the absence of this factual premise in the present case, therefore, the Supreme Court held that the legislation contained in Regulation 510/06 was not applicable and, consequently, rejected the Consortium’s complaints.