A recent decision of the Australian Trade Marks Office will see the Consorzio del Formaggio Parmigiano-Reggiano take its fight for the name Parmesan to the Federal Court. Partner, Lisa Lennon, and Lawyer, Anoushka Tait take a look at this decision in the context of the current AU-EU Free Trade Agreement negotiations.
>In Australia Geographic Indicators (GIs) are protected via the Trade Mark System (or separate legislation e.g. wines and brandy) rather than by way of a separate registration system as is the case in Europe. A recent decision of the Australian Trade Marks Office has highlighted the difficulty that regional based producers of agricultural goods in Europe face in stopping use of those terms in Australia.
In November 2019, the Consorzio del Formaggio Parmigiano-Reggiano (Consorzio) opposed Kraft Foods Group Brands LLC’s Australian trade mark application for ‘KRAFT PARMESAN CHEESE’ on the basis of the following provisions in the Trade Marks Act 1995 (Cth); section 42(b) (contrary to law); s43 (misleading connotation); and s 60 (prior reputation). The claim under s42(b) was not pursued at the hearing.
The Consorzio, a consortium of Parmigiano Reggiano cheese makers, is responsible for promoting the interests of its members and authorising the use of and protecting the name, Parmigiano Reggiano. Since 1996, ‘Parmigiano Reggiano’ has been a protected ‘geographical indication’ (GI) in Europe. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which Australia is a party, defines ‘geographical indications’ 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.” The geographical indication ‘Parmigiano Reggiano’ refers to aged hard granular cheese, otherwise known as the ‘King of Cheeses’, that is made only in a specific Italian region in accordance with stringent processes.
Trade Marks: A cheesy connotation
Asserting that the terms ‘Parmesan’ and ‘Parmigiano Reggiano’ are used interchangeably in Australia to refer exclusively to Parmigiano Reggiano cheese, the Consorzio argued that “there is a significant cohort of Australian consumers who will be confused by the Trade Mark due to the connotation of the element PARMESAN” in Kraft’s mark. In support of its argument, the Consorzio relied in part on an online survey conducted by Ipsos, a market research firm, of 1,006 people. The results of this survey showed, based on the conclusion of the Consorzio’s survey expert, Mr David Fougere, that “almost 25% of adult Australians think that Parmesan cheese is made in Italy and nowhere else”.
In contrast, Kraft argued that Parmesan is a generic term in Australia that is used by traders to refer to a “style of hard cheese that is produced in Australia and various other countries”.
The Delegate conceded that Consorzio’s evidence showed that the words ‘Parmesan’ and ‘Parmigiano Reggiano’ are sometimes used interchangeably in Australia to refer to Parmigiano Reggiano cheese but that this substitution doesn’t exclusively refer to Parmigiano Reggiano. To the contrary, she found that “many of the examples instead suggest that Parmigiano Reggiano is one example of Parmesan cheese”, but that “there are other Parmesan cheeses”.
According to the Delegate, the relevant question for the purposes of this ground of opposition was “will Australian consumers seeing the Trade Mark consider that use of Parmesan in that mark contains a connotation that the cheese being sold is Parmigiano Reggiano, originates from Italy or is associated with Italy and as a result of that connotation will be deceived or confused by the origin of cheese sold under the Trade Mark”.
The “informed consumer”
Accepting the Consorzio’s proposition that “it is necessary to consider more than one class of consumer where the class constitutes a significant number of consumers”, the Delegate acknowledged that there is a group of “informed” Australian consumers who “understand Parmesan to be the anglicised version of Parmigiano Reggiano and would use the term Parmesan to refer to Parmigiano Reggiano”. However, the Delegate considered that these “informed consumers” are “also aware that in Australia, Parmesan does not always indicate Parmigiano Reggiano and is often used to describe a style of cheese or flavour”. It was the Delegate’s view that, when presented with cheese bearing the KRAFT PARMESAN CHEESE trade mark, such informed consumers “would be sceptical that the cheese is Italian or Parmigiano Reggiano”, and were “highly unlikely” to be deceived or confused, as the Consorzio had asserted.
According to the Delegate, “the common use of the term Parmesan to indicate a style of cheese or flavour dispels any likelihood of deception or confusion arising from use of the Trade Mark”. Whether they were “informed” or “uninformed” Australian consumers, the Delegate considered they would understand that the word “Parmesan has more than one signification”, and so the Opponent failed on this ground of opposition.
Reputation rights in Parmesan
The Consorzio also sought to oppose the Trade Mark on the basis that the terms ‘Parmesan’ and ‘Parmigiano’, which it asserted are used interchangeably, have a substantial reputation in Australia, and that, as a result, Kraft’s use of the mark containing the term ‘Parmesan’ would lead Australian consumers into a false belief that the cheese being offered was “Parmigiano Reggiano, a specific cheese from Italy or a cheese from Italy”.
The Delegate disagreed that “a substantial number of consumers believe that Parmesan only indicates Parmigiano Reggiano” in Australia, finding that the Consorzio’s marketing, targeted more to “informed” Australian consumers, had been insufficient to eliminate the understanding amongst Australian cheese consumers that, as the Delegate asserted, “Parmesan is a style of cheese or cheese flavour”.
The Consorzio has taken its fight for recognition of Parmesan as a GI to the Federal Court. It is expected that the case will be heard in the first quarter of next year. This appeal comes in the context of the long-running Australian-EU Free Trade Agreement negotiations, in which the protection of GIs is one of the key topics under consideration.
Geographical Indications and the AU-EU Free Trade Agreement Negotiations
The Consorzio’s position in its opposition to registration of the KRAFT PARMESAN CHEESE trade mark is reflective of the European Union’s strong global stance on the protection of GIs, including its push to have an expanded range of GIs recognised and regulated in Australia. Parmigiano Reggiano is one of more than 300 spirit and agricultural/food GIs the EU is seeking to protect in Australia through the long-running negotiations on the AU-EU Free Trade Agreement (AU/EU FTA).
The EU is not only seeking protection against direct use of these GIs for comparable products but is also requesting expanded protections against use including against the “misuse, imitation, or evocation” of these GIs. Evocation is considered by the Australian Department of Foreign Affairs and Trade to be a “unique[ly] EU concept that prohibits the use of terms or images that could evoke or bring to mind a protected GI, even in cases where consumers are unlikely to be confused or misled”. The Consorzio has previously been successful in protecting the term Parmesan on this basis in the EU, with the European Court of Justice finding in 2008 that “use of the name ‘Parmesan’ must be regarded as an evocation of the protected designation of origin ‘Parmigiano Reggiano’”.
There are two ways to protect GIs in Australia. The first is as a certification trade mark identifying goods originating from a specific region where a particular attribute of the goods (quality, reputation or other characteristic) is attributable to that region. Current registrations include Darjeeling, Harris Tweed and Scotch Whiskey for goods made or produced from the West Indies, India and the Outer Hebrides in Scotland and can only be applied to products that satisfy the certification rules. The second, which is limited to wine-related GIs, is under a separate legislative framework with numerous Australia and EU wine-GIs currently protected under The Register of Protected Geographical indications and Other Terms. Australia’s current GI framework protects against the false or misleading use of these registered wine-GIs such as Barossa Valley, Margaret River and Coonawarra (Australia), and Champagne and Alicante (EU) (including when used in combination with terms such as ‘kind’ or ‘style’), or registered translations of such GIs and other protected expressions and terms.
If the EU is successful in the FTA negotiations, extensive reform of the current Australian framework of protections would be required to recognise and protect the extensive list of spirit and agricultural/foods GIs. This could result in terms such as ‘Parmesan’, that bring to mind certain EU GIs, becoming off-limits for use by Australian producers.
Although the Australian Government has stated that it “is open to considering the protection of geographical indications in a mutually acceptable way”, the parties are now up to round 14 of the AU/EU FTA talks and it seems unlikely that there will be any significant expansion of protection of Geographical Indications in Australia in the near future.