Copyright in tastes? The CJEU rules there is no copyright in the taste of cheese

By David Stewart

15 November 2018

On 13 November 2018, the Court of Justice of the European Union (CJEU) indicated that it would issue its preliminary ruling in Levola Hengelo, C-310/17. This was a referral from the Netherlands (Gerechtshof Arnhem-Leeuwarden) to the CJEU for a preliminary ruling, seeking a determination on whether copyright could exist in a taste, in this instance, of a spreadable cheese.

The referred questions were:

(a)    Does Union law preclude the taste of a food product — as the own intellectual creation of the author — being granted copyright protection? In particular:

(b)    Is copyright protection precluded by the fact that the expression ‘literary and artistic works’ in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes ‘every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression’, but that the examples cited in that provision only relate to creations which can be perceived by sight and/or by hearing?

(c)     Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d)    Does the system of exclusive rights and restrictions, as governed by Articles 2 to 5 of Directive 2001/29/EC, (1) preclude the copyright protection of the taste of a food product?

If the answer to question 1(a) is in the negative:

(a)    What are the requirements for the copyright protection of the taste of a food product?

(b)    Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c)     What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d)    How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is the decisive factor here that the overall impressions of the two tastes are the same?

In a press release issued prior to the judgment, the CJEU noted that:  “Classification as a ‘work’ requires, first of all, that the subject matter concerned is an original intellectual creation. Secondly, there must be an ‘expression’ of that original intellectual creation.”  On that basis alone, a taste would be capable of being protected by copyright. But the CJEU then went on to say,

“In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, which was adopted in the framework of the World Trade Organisation and to which the EU has acceded, and with the WIPO Copyright Treaty, to which the EU is a party, copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such. Accordingly, for there to be a ‘work’ as referred to in the Directive, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.”

A taste cannot be expressed with sufficient precision and objectivity, and so copyright in a taste cannot exist.

Theoretically it would be possible to register a taste as a trade mark. The Australian Trade Marks Act 1995 says that a trade mark is a “sign” and a “sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.” The inclusive nature of the section indicates that a taste would also qualify for trade mark protection.

But the World Intellectual Property Organisation’s newsletter in 2009 noted:

Taste marks may be easier to represent graphically – the SCT reports that “the graphic representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark” – but the hurdle of distinctiveness is even harder to overcome as are assertions concerning functionality.

OHIM rejected the pharmaceutical company Eli Lilly’s attempt to register the taste of artificial strawberries noting in its decision in case R 120/2001-2, “Any manufacturer… is entitled to add the flavor of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product…” A similar attempt by N.V. Organon to register an orange flavor for pharmaceuticals was rejected by the USPTO. As the Trademark Trials and Appeals Court pointed out, it is difficult to define how taste can act as a trademark when consumers only taste goods after purchase.

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