Opposition to GORGONZOLA Certification Trade Mark Application Rejected
In Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated 2022 NZIPOTM 13 an Assistant Commissioner (AC) was not persuaded that GORGONZOLA has become a descriptive or generic term for cheese in New Zealand.
GORGONZOLA has been a Protected Designation of Origin (PDO) in the EU since 1996. PDO’s are a particularly strict indication of geographical origin. To receive PDO status the entire product must acquire its unique properties by being traditionally and entirely manufactured (prepared, processed and produced) within the specified regions. This contrasts with protection as a geographical indication, which requires that the entire product must acquire its unique properties by being traditionally and at least partially manufactured (prepared, processed or produced) within the specified regions. Through free trade agreements and other diplomatic efforts the EU has been encouraging other countries to recognise EU indications of geographical origin in their legislation concerning geographical indications or denominations of origin. Current jurisdictions in which some form protection is available for GORGONZOLA can be found here.
New Zealand’s geographical indications legislation doesn’t yet extend to foodstuffs, as it has so far been limited to the TRIPs minimum of wine and spirits, and the names for these do not require meeting the PDO standard in order to be protected as a geographical indication. This context led the Italy based Consorzio to apply to register GORGONZOLA as a certification trade mark in respect of cheese in October 2015. In relation to goods a certification mark is a sign that is capable of distinguishing goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified. For certification marks the applicant is also required to file rules governing use of the mark within 6-months. The Consorzio’s rules regarding qualifying use of GORGONZOLA relate to a unique combination of physical, organoleptic, chemical and chemo-physical characteristics for the cheese produced. According to the Consorzio GORGONZOLA is a distinctive name applied to a specific type of cheese, produced in a particular region of Italy using traditional methods, which cannot be exactly replicated elsewhere.
In July 2018 Consorzio’s application was accepted by IPONZ subject to being endorsed as registered under section 18(2), which allows for acquired distinctiveness on account of use or any other circumstances. In opposing the accepted application the Association argued that in New Zealand Gorgonzola is a generic name for a type or style of blue-vein cheese and that it is too late to assert otherwise.
The AC noted that on account of Gorgonzola being indicative of the geographical origin of Gorgonzola cheese, the applied for mark does not satisfy section 18(1)(c) or the catch-all provision 18(1)(b), and so found the opposition made out under those grounds. Consequently the registrability of GORGONZOLA was dependent upon the exception provided under section 18(2).
The AC then noted the Australian decision rejecting GORGONZOLA as a certification mark due to a long and on-going history of use of that term to describe a style of cheese that may but need not emanate from Italy, and so there was found to be a need for other traders to use that term for its descriptive properties. Also noted was the UK decision finding STILTON to qualify as a certification mark for cheeses due to the sufficiently long use of that term to exclusively denote cheeses manufactured by a particular process in the counties of Derbyshire, Leicestershire and Nottinghamshire. Interestingly the village of Stilton is not in any of those counties, but its name is used as the relevant cheese has a long history of being sold there.
The AC then held that GORGONZOLA having PDO status in the EU does not by itself amount to “other circumstances” for section 18(2) purposes, and that the distinctiveness of GORGONZOLA must be considered from the perspective of the average consumer perceiving the mark used in relation to cheese. The Association argued that Gorgonzola is simply a method of making cheese and anyone with the recipe or knowing the method can make it and legitimately describe it as Gorgonzola. They led evidence of a number of non-certified users of Gorgonzola in relation to cheese in New Zealand. The largest of these was Puhoi Valley Cheese Company who used ‘Gorgonzola style’. However, the AC took that to indicate that the cheese is not Gorgonzola but seeks to emulate the characteristics of Gorgonzola, as there would be no need to use “style” if Gorgonzola were a generic description for those characteristics. The AC noted that the lack of evidence of widespread and long-standing use of Gorgonzola generically counted against the Association’s position. The Association’s evidence also included declarations by experienced New Zealand based cheesemakers including the head trainer at the New Zealand Cheese School and members of the New Zealand Specialty Cheesemakers Association stating that Gorgonzola is a generic description and that consumers do not perceive the cheese as needing to have a specific origin. However, the AC questioned their independence and found their views to be imprecise or too general. While the AC found there was some evidence of Gorgonzola being used descriptively in relation to cheese, overall the AC favoured the Consorzio’s evidence as representing the state of the market from the perspective of the average consumer and so found acquired distinctiveness to be made out.
The way in which the AC downplayed the Association’s evidence and arguments could give rise to grounds for appeal. However, the subsequent confirmation that New Zealand and the EU concluded their FTA negotiations and that many EU PDO’s and GI’s (including GORGONZOLA) will eventually be protected in New Zealand as GIs for foodstuffs in addition to wine and spirits makes an appeal unlikely.
Author: Quinn Miller