In brief

A US district court recently concluded that the term "Gruyère" is understood by cheese purchasers in the US to be generic in that it refers to a type of cheese without regard to where that cheese is produced. The term "Gruyère" was thus refused protection as a geographic certification mark and, in contrast to the situation in Switzerland or the EU, cheese from other geographical areas may also be called "Gruyère." However, this may not be the end of the matter. The decision may still be reversed on appeal.

Contents

  1. Facts of the case
  2. The decision of the US district court
  3. How is "Gruyère" protected in Switzerland?
  4. Can an AOP be registered as a trademark?

Facts of the case

Swiss and French cheesemakers had applied to register the term "Gruyère" as a so-called geographic certification mark with the US Patent and Trademark Office (USPTO), which is used in the US to certify that authorized users' goods or services originate in a specific region. This certification was intended to certify that the cheese comes from the Gruyère region of Switzerland and France. The US Dairy Export Council opposed the registration of the "Gruyère" mark, arguing that the term "Gruyère" is generic in that it refers to a type of cheese without regard to where that cheese is produced. The USPTO's appeals board sustained this opposition, which was then appealed to the US District Court of the Eastern District of Virginia ("Court").

The decision of the US district court

In the US, generic terms are ineligible for (certification) mark protection because, pursuant to the relevant practice, a term that was once non-generic and conveyed the quality or origin of goods can become generic over time through a process called genericide. This occurs when a generic term ceases to identify in the public's mind the particular source of a product or service but rather identifies a class of product or service, regardless of the source.

The central question presented to the Court was therefore whether cheese purchasers in the US understand the term "Gruyère" to refer only to a specific type of cheese produced in the Gruyère region of Switzerland and France or whether cheese purchasers in the US instead understand "Gruyère" as a generic term that refers to a type of cheese regardless of where it is produced.

In its decision dated 15 December 2021, the Court concluded that, although the term "Gruyère" may once have been understood to indicate an area of cheese production, decades of importation, production and sale of cheese labeled "Gruyère" produced outside of the Gruyère region of Switzerland and France have eroded the meaning of the term and rendered it generic.

In its decision, the Court considered the following in particular:

  • The existing US regulations permit the use of the term "Gruyère" on cheese regardless of where the cheese is produced.
  • There is abundant data showing the widespread sale and importation of "Gruyère" cheese produced outside of Switzerland and France.
  • Evidence that "Gruyère" cheese produced outside of the Gruyère region of Switzerland and France pervades the cheese market in the US and is purchased in substantial quantities directly demonstrates that when cheese consumers in the US walk into a retail store and ask to purchase "Gruyère" cheese, they do so without intending to limit their request only to Swiss or French-made cheese.
  • There is no record that Swiss and French cheesemakers attempted to police the use of the term "Gruyère" in the US prior to 2012. From 2012 onward, letters asking retailers and manufacturers to cease using the term "Gruyère" to label cheeses that were not produced in the Gruyère region of Switzerland and France were sent. However, these attempts to control the use of the term only achieved limited success. Some cheese sellers agreed to comply, but many producers and retailers continued to use the term.
  • Today, the term "Gruyère" is commonly used in dictionaries, media communications and cheese industry events and materials to refer to a type of cheese without respect to where the cheese is produced.

However, this is not the end of the US cheese saga. The Swiss and French cheesemakers have communicated that they will appeal against this decision.

How is "Gruyère" protected in Switzerland?

There is some good news. If you buy "Gruyère" cheese in Switzerland, you are guaranteed that the cheese actually comes from Gruyères. In Switzerland, "Gruyère" is protected as a so-called AOP (appellation d'origine protégée — protected designation of origin). AOPs are certain designations, such as "Gruyère" and "Tête de Moine" (another delicious cheese), that are specially protected indications of origin entered in a register of the Federal Office for Agriculture. There are currently 25 different AOPs registered.

After registration by the Federal Office for Agriculture, the protected designations may only be used for products that meet the origin, process and quality requirements of the specifications defined specifically for each AOP. The AOP is not the property of a certain (legal) person, but there is a right of use for any producer that complies with the respective specifications. Independent certification bodies monitor compliance with these requirements.

Enforcement of these requirements is quite strict. In September 2014, for example, the Federal Supreme Court had to rule on an infringement of the regulations of the specification for the protected designation of origin "Gruyère." It upheld a ruling that a cheesemaker may not produce Gruyère AOP with milk from a neighboring municipality that does not fall within the geographical origin area defined in the specifications, stating that such ban did not violate economic freedom.

Swiss trademark law was very recently (1 December 2021) amended to implement the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. This allows Swiss producers to apply for protection of geographical indications and AOPs simultaneously in numerous countries that are part of the agreement using a simplified procedure.

Can an AOP be registered as a trademark?

Since registering the designation as an AOP opens the use of the protected designation to all producers who comply with the specifications, the entry in the register reinforces the need to keep the designation free as a sign in the public domain. The fact that the sign in question has been registered as an AOP, however, does not mean that it is distinctive within the meaning of trademark law. AOPs can only be registered as trademark elements under certain conditions.

That being said, a sign including an AOP may be registered as a trademark if it contains further distinctive sign elements. According to the practice of the Institute of Intellectual Property (IPI), in order to exclude an infringement of the special legal provisions on AOPs as well as the risk of misleading customers, a distinctive sign with an AOP is registered for the product in question only with a restriction on those products that the AOP in question covers. For example, a figurative mark that, among other things, contains the term "Gruyère" next to a figurative element depicting a wheel of cheese and an alphorn player was granted protection in Switzerland. The goods covered in this trademark are "cheeses with the protected designation of origin 'Gruyère'" in class 29.