by Ivan Lipshitz, Adv., JMB Davis Ben-David
A recent decision of the U.S. Court of Appeals for the Fourth Circuit affirming the generic nature of the geographic indication of “Gruyere” relating to cheese has become a source of severe indigestion for gastronomes, food aficionados and lovers of fine wines, spirits and luxurious delicacies and foodstuffs. This is especially so for those who rely on the Protected Designation of Origin (PDO) product designation to assist them in protecting their refined palettes from geographical counterfeits. More on the cheesier aspects of this subject later on.
PDO’s provide legal, almost trademark – like, protection to certain exclusive products, spirits and alcoholic beverages under the legislation of certain countries. They can apply to both foodstuffs and alcoholic beverages, each uniquely produced in a specific place, region or country, and whose given quality, reputation or other characteristics are essentially attributable to its geographical origin, provided that such products meet certain prescribed conditions of manufacture or production consistent with the reputation afforded by the use of the specific geographic label. PDO`s play a special role within the European Union, the U.K. and Switzerland, among others. Through PDO `s the place name of origin designation and production of food, spirit and alcoholic beverages, which are not eligible for trademark protection per se, are nonetheless reserved for the exclusive use of those companies that manufacture or produce such products originating from the designated geographical area and manufactured or produced in such prescribed manner. Unlike trademarks, however, there is no one owner of a PDO designation. It is free to be used by any company whose products meet the specific requirements of the PDO concerned.
Examples of well-known food products, spirits and alcoholic beverages to which the PDO product designation applies and where there is a link between the characteristics of the product or the food, spirit and alcoholic beverage and its geographical origin are: Champagne, Cava and Prosecco ( sparkling wines), Cognac (brandy), Balsamic (vinegar), Parma and Prosciutto (ham), Scotch Whiskey (whiskey), Kriek (beer), Hollandse Maatjes/Hollandse Nieuwe (herring), Kalamata (olives), Mozzarella, Parmigiano Gorgonzola , Pecorino and of course, Gruyere (cheeses). A more extensive list by country of other types of foodstuffs and alcoholic beverages that are the subject of PDO laws and regulations can be found here.
But, what is the scope of the legal protection afforded by PDO`s, and their restrictions and limitations?
In the EU, UK and Switzerland, PDO`s have a wide scope of protection. In the EU, the geographical indications of source are entered into a register by the EU Commission in consultation with EU member states. This register can be viewed online via the “eAmbrosia” database.
The scope of PDO protection has been extended by case law in recent years. “Scotch Whisky”, for example, can only be used on whisky produced in Scotland and in accordance with strict production and labelling requirements set down in law. Scotch must be distilled in Scotland from water and malted barley with specified alcohol levels and matured in Scotland.
In this context, the case of a whisky produced in Germany and marketed under the “Glen Buchenbach” designation was found by a Hamburg Regional Court as being misleading regarding its designation as “Scotch Whisky”. The Court ruled that a geographical indication registered for a spirit drink is protected in the EU not only against the use of such an indication but also against any reference that suggests the geographical origin of that indication. Thus, because the designation “Glen” is widely used in Scotland instead of the word “valley” and, in particular, as an element in the trademarked names of many Scottish whiskies, it evokes in the relevant public an association with Scotland and Scotch Whisky despite the fact that the label clearly specified that the product was of German origin. It was held by the Hamburg court that consumers,would wrongly assume that “Glen Buchenbach” is a product of Scottish origin.
In another case, a pet food company applied to register “Pawsecco” as a UK trademark for certain pets’ treats. The body managing Prosecco’s PDO and its EU collective trademark “Prosecco PDO” objected to the application on grounds that it infringed both the PDO and the collective trademark. The objection based on the collective trademark was rejected. The UK Intellectual Property Office ruled that it would be obvious to anyone that Pawsecco was not, and did not contain Prosecco, and was neither licensed nor authorised for sale by Prosecco, but was a gimmicky, novelty product for pets. However, the claim in relation to the PDO succeeded simply because of the fact that the Pawsecco mark would evoke the Prosecco PDO in consumers’ minds. Indeed, that was what underpinned the commercial value of the name ‘Pawsecco’ to the pet company in the first place. Even though consumers would know that Pawsecco was not actually associated with Prosecco, the association of ideas meant that the pet company was taking undue advantage of the PDO.
But, what is the position in other countries like the US where there is no parallel protective regulations and legislation and where PDO protections afforded by EU, UK and Swiss PDO legislative protections do not apply ?
Back to the U.S. Court of Appeals for the Fourth Circuit. This Court recently affirmed the decision of the U.S. District Court for the Eastern District of Virginia upholding the ruling of the TTAB that the term “Gruyere” is generic for cheese and therefore unregistrable as a certification mark. (Interprofession du Gruyère et al. v. U.S. Dairy Export Council et al.,, Appeal No. 22-1041 (March 3, 2023) The district court found, on a motion for summary judgment, that “the undisputed evidence produced by the parties in this case makes clear that the primary significance of the term “Gruyere”, as understood by the relevant purchasing public in the United States, is a generic term for a type of cheese and does not refer solely to cheese from a specific geographic region.” The Fourth Circuit reasoned that “the common usage of gruyere “establish[es] that when purchasers walk into retail stores and ask for [gruyere], they regularly mean “a type of cheese, and not a cheese that was produced in the Gruyère region of Switzerland and France.” The U.S. Court of Appeals for the Fourth Circuit therefore concluded that the term “Gruyere” had become so synonymous with cheeses in general, describing a class of goods, per se, rather than the source of the goods that it no longer described the region of origin of the product concerned.
Under U.S. trademark law, as illustrated by this case, the term “gruyere”, had, through the process of genericide, become generic and was thus ineligible for trademark protection. Based on the above, it appears that gruyere cheese has joined the ranks of other terms, like trampoline, aspirin, and escalator, that have been held to have become genericized whereby the connection between the term “gruyere” and its Swiss and French roots has become nullified and generic over time. For more on the concept of Genericide and how to avoid it, see my earlier articles on this subject.
So, it would seem that the answer to my question posed in the title of this article above is, that, a cheese can be labelled as “gruyere” in the US, at least , even if this type of cheese is manufactured or produced in the US, or outside Europe’s and Switzerland`s Gruyère region.
Antidote to Indigestion
An important takeaway from the Gruyere Cheese case above is that extreme caution should be exercised in the area of PDO`s. PDO`s are powerful rights, and in certain ways they have the potential to offer stronger protection than trade marks, but only in jurisdictions where such rights are enshrined in law. If one is manufacturing or marketing food or drink products in categories for which PDO`s have been obtained, you should carefully consider the selection and adoption of dissimilar product names that do not fall foul of evoking a PDO.
Finally, as indicated by the Gruyere Cheese case in the US, a protection strategy which relies on the existence of a PDO should not be adopted in all jurisdictions alike, and certainly not in the US where typically, goods-specific trademark tests apply to the exclusion of rights devolving from a PDO.
Legal advice should be sought to determine the scope of a particular PDO in a specific country or jurisdiction. In cases of doubt, and to determine the precise scope of protection associated with a PDO in your country of interest, you should consult your trademark attorney.
If you need any legal assistance with the selection of your brand names, and the protection of your trademark rights generally , please email Ivan Lipshitz at Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.