In Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated 2022 NZIPOTM 13 A Deputy Commissioner (AC) was not convinced that GORGONZOLA had 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. PDOs 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) in the specified regions. This contrasts with protection as a geographical indication, which requires the entire product to acquire its unique properties by being traditionally and at least partially manufactured (prepared, processed or produced) in the specified regions. Through free trade agreements and other diplomatic efforts, the EU has encouraged other countries to recognize EU geographical indications of origin in their legislation on geographical indications or designations of origin. origin. Current jurisdictions in which some form of protection is available for GORGONZOLA can be found here.
New Zealand’s GI legislation does not yet extend to foodstuffs, as it has so far been limited to the TRIPS minimum for wines and spirits, and the names of these have not no need to comply with the PDO standard to be protected as a geographical indication. . This context led the Consorzio based in Italy to apply for the registration of GORGONZOLA as a certification mark for cheese in October 2015. With regard to products, a certification mark is a sign capable of distinguishing products certified by any person as to the origin, material, method of manufacture, quality, accuracy or other characteristic of uncertified goods. For certification marks, the applicant is also required to file the rules for the use of the mark within 6 months. The Consorzio rules regarding the qualified use of GORGONZOLA relate to a unique combination of physical, organoleptic, chemical and chemical-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 according to traditional methods, which cannot be exactly reproduced elsewhere.
In July 2018, Consorzio’s application was accepted by IPONZ subject to approval as registered under Article 18(2), which permits the acquisition of distinctiveness by reason of use or any other circumstance. In opposing the successful application, the Association argued that in New Zealand gorgonzola is a generic name for a type or style of blue-veined cheese and that it is too late to argue otherwise. .
The CA noted that since Gorgonzola is indicative of the geographical origin of Gorgonzola cheese, the mark applied for does not satisfy Article 18(1)(c) or the catch-all provision 18(1). )(b), and thus concluded the opposition filed on these grounds. Therefore, the registrability of GORGONZOLA depended on the exception provided for in Article 18(2).
The AC then noted the Australian decision rejecting GORGONZOLA as a certification mark due to a long and continuous history of the term being used to describe a style of cheese that may but need not have originated in Italy. , and so it turned out that there was a need for other traders to use this term for its descriptive properties. It was also noted that the UK decision concluding that STILTON was considered a certification mark for cheeses due to the long enough use of this term to refer exclusively to cheeses made by a particular process in the counties of Derbyshire, Leicestershire and Nottinghamshire. Interestingly, the village of Stilton is not in any of these counties, but its name is used because the cheese concerned has been sold there for a long time.
The CA then considered that GORGONZOLA having PDO status in the EU does not in itself constitute “other circumstances” for the purposes of Article 18(2) and that the distinctive character of GORGONZOLA must be considered from the perspective of the average consumer perceiving the brand used. compared to cheese. The Association argued that Gorgonzola is simply a method of making cheese and anyone who knows the recipe or knows the method can legitimately make and describe it as Gorgonzola. They provided evidence of a number of uncertified users of Gorgonzola in relation to cheese in New Zealand. The largest of these was the Puhoi Valley Cheese Company which used the “Gorgonzola style”. However, the AC took this to indicate that the cheese is not Gorgonzola but seeks to imitate the characteristics of Gorgonzola, as there would be no need to use the “style” if Gorgonzola were a generic description of these features. The Board noted that the lack of evidence of widespread and long-standing generic use of gorgonzola weighed against the Association’s position. The Association’s evidence also included statements from experienced New Zealand cheesemakers, including the head trainer of the New Zealand Cheese School and members of the New Zealand Specialty Cheesemakers Association, claiming that gorgonzola is a generic description and that consumers do not perceive cheese as needing to be of specific origin. However, the CC questioned their independence and found their opinions imprecise or too general. While the AC found that there was evidence that Gorgonzola was used descriptively in relation to cheese, overall the AC favored the Consorzio’s evidence as representing the state of the market for the perspective of the average consumer and therefore concluded that acquired distinctiveness was established.
The manner in which the CA minimized the Association’s evidence and arguments could give rise to grounds for appeal. However, subsequent confirmation that New Zealand and the EU have concluded their FTA negotiations and that many EU PDOs and GIs (including GORGONZOLA) will eventually be protected in New Zealand as GIs for foodstuffs in addition to wine and spirits makes a call unlikely.