In US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Gorgonzola [2020] ATMO 44 , the delegate of the Registrar of Trade Marks(“the delegate”) found that the descriptive use of “GORGONZOLA” for more than a hundred years for a style of blue-vein cheese in Australia predated the relatively small amount of use of “GORGONZOLA” certified cheese imported by members of Consorzio Per La Tutela Del Formaggio Gorgonzola (“Applicant”) since 1999 and decided that the Applicant’s trade mark application for “GORGONZOLA” (“Trade Mark”) as a certification trade mark for cheese in class 29 be rejected under s 177 of the Trade Marks Act 1995 (Cth)(“Act”).

Intellectual Property Office of Australia (IP Australia)

Hearing Officer: Nicholas Smith, Delegate of the Registrar of Trade  Marks

Decision Date: 24 March 2020

Background of GORGONZOLA

Consorzio Per La Tutela Del Formaggio Gorgonzola is a consortium set up since 1970 to ensure compliance with and enforcement of national and international legislation protecting the GORGONZOLA Protected Designated Origin (“PDO”). Its members are 39 companies (“recognised parties”) in Italy that produce cheese certified by the Trade Mark. Its PDO status in the European Union (“EU”) requires cheese produced in accordance with Certification Rules and are referred as “Gorgonzola cheese”. Gorgonzola is raw-paste mouldy cheese made exclusively from pasteurised whole cow’s milk with characteristic blue-green and/or grey-blue veins due to the development of mould, produced in Italy in the Area of Protection defined in Certification Rules. The quality of the cheese is affected by certain natural factors in the defined geographical areas and human factors including the traditional craft cheese-making techniques that have been handed down over centuries.

US Dairy Export Council (“Opponent”) is a non-profit body representing the trade interests of diary producers from the United States of America.

The Applicant applied to register “GORGONZOLA” (trade mark no. 1705467) as a certification trade mark for cheese in class 29 on the 7 July 2015 (“relevant date”). The trade mark was examined and accepted for advertisement on 1 March 2018. The Opponent opposed the Applicant’s trade mark application on grounds under ss 42(b), 58, 59 and 177 of the Act. The Opponent bears the onus of proof. 

Relevant Legal Considerations for Certification Mark in Australia

The delegate noted the broad principles relating to certification trade mark under s 177 of the Act and that the “presumption of registrability” that applies to standard trade mark does not apply to certification marks as noted by the authors of Shanahan. 

The central issue was for the delegate to determine if the Trade Mark was to any extent capable of distinguishing goods and services certified by the Applicant (or its approved certifier) either inherently under s 177(2)(a) or because of its use or any other circumstances under s 177(2)(b) from goods and services not certified. The delegate noted that also the test while not explicitly requiring an “express indication” that a mark is intended to function as a certification mark, the mark must, either inherently or through use or other circumstances, be capable of operating to inform the consuming public that the goods to which the mark is applied have been certified. 

The delegate was satisfied that Gorgonzola has been used in Australia at least since 1882, to describe a blue-vein style of cheese (often not necessarily produced in Lombardy region in Italy) available in Australia and recognised by consumers in Australia (ordinary signification). On evidence, cheese certified by the Applicant was only imported into Australia after 1999. There was use of Gorgonzola in Australia by various producers other than the recognised parties since 1999. There was clear evidence (based on existing use of the Trade Mark for its descriptive purposes) of the desire of other traders to use the mark for its descriptive properties. The use of the Trade Mark as a descriptive property for cheese in Australia also predated the existence and status of the Trade Mark as a PDO in Europe. The delegate was satisfied that the Trade Mark fail at the hurdle under s 177(2)(a) and turned to consider if use or other circumstances for the Trade Mark warrant any merit under s 177(2)(b). 

The delegate found marketing to be minimal and expenditure low in comparison to the overall market for cheese in Australia. The sales of Gorgonzola cheese by recognised parties into Australia was small relative to the size of the cheese market and the delegate was not satisfied that because of its use, the Trade Mark would be recognised by consumers in Australia as cheese certified by the Applicant. The delegate then considered its PDO status in Europe but found the use of the Trade Mark for descriptive purposes predating the existence of PDO status in Europe. The delegate then concluded that at the relevant date, the Trade Mark was not capable of distinguishing cheese certified by the Applicant from cheese not certified.

The s 177 ground of opposition was successful and GORGONZOLA was refused registration.

Takeaway Points

The case underscores the importance of an “express indication” for a certification trade mark in Australia either inherently or through use or other circumstances, especially if it seeks to inform consumers by distinguishing goods and services that are certified from those not certified.

In the current case, the Applicant found “deep-seated” descriptive use of “GORGONZOLA-style” for cheese available in Australia to describe a blue-vein style of cheese since 1882 and any similar or identical mark applied for as a certification mark would face huge hurdles before being accepted in the same jurisdiction.

Disclaimer: The above is provided to assist in the understanding of the decision by the Intellectual Property Office of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.