Google the term “asiago” and you’ll shortly learn it references the Asiago variety of cheese popularly known for its crumbly textural qualities. Dig a little deeper and you will also find that, not surprisingly, the name “asiago” is a registered geographic term in the European Union (EU), owned by the Italian consortium of cheese producers and recognised as indicating a style of cheese produced in the Asiago region.

Classic subject matter for a geographical reference objection. Yet, a recent decision issued by IP Australia has seen sales made by a US cheese-making company trump that of the Italian consortium, overturning the trade mark opposition initiated by them and ultimately affording registration of SARTORI ASIAGO covering “Asiagostyle cheese” to the US Sartori Company. The decision sees evidence filed on behalf of the US cheese-maker regarding its rights in the word element “Asiago” be prioritised over and above the EU-based rights held by the Italian consortium for a variety of cheese that signifies their own region. Significantly, the US cheese-maker succeeded in the Opposition despite having no evidence of Australian sales.

The decision focuses on the significance of sub-section 61(2)(c) of the Australian Trade Marks Act 1995 which sets out a defence to the opposition ground relating to geographic indications.

The Background

Sartori Company is a fourth-generation family owned company in the great American tradition. The US based cheese-maker has retailed its SARTORI ASIAGO under its traditional structure for over 50 years and recently filed an Australian Trade Mark Application for the brand which covered “Asiago-style cheese”. This application was opposed by Consorzio Per La Tutela Del Formaggio, the Italian consortium of cheesemakers who was responsible for certifying the quality of Asiago cheese in the EU. Moving into the Australian marketplace, the question of ownership was assessed with an Opposition proceeding that involved the grounds of:

- Section 60: use of the mark would be likely to deceive or cause confusion because of reputation in a prior mark;

- Section 42(b): use of the mark would be contrary to law;

- Section 43: use of the mark is likely to deceive or cause confusion because of a connotation the mark possesses; and

- Section 61: the opposed mark comprises a geographic indication for goods in a region other that the country in which the applied for goods originated.

Turning on the impact of sub-section 61(2)(c), the Opposition was awarded in favour of Sartori Company and the Application progressed to registration.

The impact of sub-section 61(2)(c) in the context of the Section 61 ground

Sub-section 61(2)(c) provides that a Section 61 opposition ground will fail, if the applicant has used the mark from a date prior to 1 January 1996, or a day earlier than the date the name was recognised as a geographic indicator in the country of origin of the goods, whichever is later. It should be noted that the provision is silent as to whether such use must be in Australia and this issue gave rise to the contrary arguments in the Opposition, and ultimately the victory of Sartori Company.

In the context of Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64 the Hearing Officer was satisfied that the Applicant’s evidence showed use of “Asiago” in the US and elsewhere since the 1950s, being used on product brochures and price lists, which satisfied sub-section 61(2)(c). Further, that as submitted by the Applicant’s representatives, based on the law as it stands there was no requirement that such use occur in Australia.

This interpretation was held to be consistent with the wording of Article 24(5) of the Trade Related Aspects of Intellectual Property Rights (“TRIPS”), upon which the provision was based.

It was also noted by the Hearing Officer that in the recent decision of Consorzio Tutela Vini Emilia v Vinedos Emiliana SA the applicant was similarly able to rely upon use of its applied mark in relation to a winery in Chile, in order to counter a Section 61 ground for opposition.

In respect of the balance of the grounds, the Hearing Officer stated:

- Section 60: The mark would not be likely to deceive or cause confusion because of the reputation in a prior mark, because it was necessary to consider the character of the reputation which has been established. This ground of opposition did not succeed because the Hearing Officer found that there was no evidence that the Opponent had educated the public that Asiago branded cheese came only from the Asiago region of Italy. Rather, consumers would consider the term to be descriptive of a type of cheese, like parmesan, mozzarella and ricotta.

- Section 42(b): The ground should not be upheld because Australian consumers would not be misled into believing that Asiago branded cheese originated from the Asiago region of Italy for the reasons discussed above.

- Section 43: Use of the mark would not be likely to deceive or cause confusion in relation to the goods applied for (“Asiago-style cheese”), because consumers would not regard use of the name as an indication that the goods are produced in a particular place.

The Takeaways for Trade Mark Practitioners The decision highlights the ambit of the immunity granted by sub-section 61(2)(c) relating to earlier use of the opposed mark in the context of geographic indications, providing practitioners with further guidance regarding its application as a potential tool in the context of a related opposition proceeding. In particular, the decision clarifies that the immunity granted by the sub-section may be based upon earlier use of the opposed mark outside Australia.