By Paul Cosmovici
In a recent decision of the US District Court for the Eastern District of Virginia, Alexandria Division, it was ruled that Gruyere cheese does not have to come from the Gruyere region, a canton of Fribourg, Switzerland – where Gruyere cheese has been produced according to the traditional recipe since 1115 –, based on the reasoning that the term is a generic name for cheese and therefore cannot be registered as a trademark.
In that sense, the US Dairy Export Council and other groups have opposed the trademark protection of the Gruyere cheese in the US arguing that American consumers depict the Gruyere name as a mere generic name for a cheese of a specific type, in this case a nutty flavored cheese with small holes in it, regardless of the place of origin.
The “Gruyere-ness” of the Swiss Gruyere cheese
In 2001 Gruyere cheese was granted the Appellation d’Origine Contrôlée (AOC) status at national level and in 2011 it received the Protected Designation of Origin (PDO) or Appellation d’Origine Protégée (AOP) certification applying to the whole of Europe.
The Gruyere cheese PDO is registered in the Swiss Federal Office for Agriculture (FOAG), meaning that prior to that, the designation can only be used for products that follow through the criteria pertaining to the origin, fabrication process, quality etc. The specifications, clearly indicate the geographical area that it includes (cantons of Fribourg, Vaud, Neuchatel, Jura, Bern), a geographical radius of maximum 20 km from which milk is collected and the physical and organoleptic characteristics, amongst many others. So, it must have “the shape of a round wheel and must present a smeared crust, uniformly brushed and healthy” with the “heel of the cheese […] slightly convex”, measuring in height between 9,5 cm to 12 cm, diameter from 55 cm to 65 cm and weight ranging from 25 kg to 40 kg and presenting very precise chemical characteristics, containing fat (49 to 53% in the dry extract), water (34.5 to 36.9%) and salt (1.1 to 1.7%).
Now, to clarify things, it should be mentioned that according to Article 22 (1) of the TRIPS Agreement, geographical indications refer to the indications that “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”. What is interesting though is that you can use the label “Gruyere cheese made in the United States”, as it informs the consumers about the true origin of the product, whilst also being informed that the product is based on the qualities and specifications of that particular Swiss cheese recipe, however, the dispute between the European and American cheesemakers goes further than that.
So, what about the “Gruyere-ness” of the US produced Gruyere cheese?
The Swiss Interprofession du Gruyère and the French Syndicat Interprofessional du Gruyère filed an application with the US Patent and Trademark Office (USPTO), in order to register the term “Gruyere” as a certification mark, that was rejected. Prior to that, the US Dairy Export Council filed an opposition with the Trademark Trials and Appeals Board (TTAB), arguing that the term is a generic one.
The question presented to the Court in the Interprofession du Gruyere v. U.S. Dairy Export Council case of whether “the term should receive geographical trademark protection such that the term may only be used to identify and describe cheeses produced in certain portions of Switzerland and France, or whether the term Gruyere is understood by cheese purchasers in the United States to be generic in that it refers to a type of cheese without regard to where that cheese is produced”. TTAB issued a written opinion arguing that the term Gruyere is “generic for a for a type of cheese without regard to the cheese’s geographic origins and sustained the opposition to the certification mark”.
The Court eventually decided that the term Gruyere, as understood by the US consumers is generic for a type of cheese and does not refer exclusively to cheese from a specific region, concluding that through genericide and erosion of the term`s meaning through decades of importation, production, and sale of cheese with the Gruyere label, it is ineligible for registration as a certification mark. The decision, now appealed, is applicable only to the US, as in Europe Gruyere is a Protected Geographical Indication (PGI).
European countries are indeed particularly protective of their culinary heirloom, and using the term Gruyere for cheese produced in the US or anywhere else in the world (besides France and Switzerland) can pose a threat to the reputation of the original product and can have damaging effects for that sector of the economy, however it can also be considered a side-effect of the globalization and international trade that simultaneously can make way for a more competitive market and stimulate economies. Of course, if you are a cheese afficionado, you are keen on your Gruyere cheese to actually come from the Gruyere region, and you want to support local economy and tradition, then you might surely want the “real deal”. The case is particularly exciting to follow in the months to come and see whether the appeal will eventually give Gruyere the same fate as Roquefort`s cheese.
Paul Cosmovici is Managing Partner at Cosmovici Intellectual Property, European Trademark Advisor and member lawyer of the New York and Geneva Bars. He has experience in the field of Intellectual Property strategy, getting involved in commercial transactions, extensions of brand portfolios and in the protection of IP assets for multinationals, but also for start-ups