‘Cheese with holes’: Gruyère's IP woes in the US

Certain premium foods and beverages such as cheese and wine may improve with age, but a US court has shown that their IP can have a much shorter shelf-life abroad.

This month, the US Court of Appeals for the Fourth Circuit ruled that Gruyère was a generic name for a type of cheese with holes—to the dismay and disbelief of European cheese makers who had argued that the name should be a geographically protected term.

The court, however, refused to recognise that the name served as a certification mark indicating a specific cheese first produced in the Gruyère region of Switzerland and France.

Chief US Circuit Judge Roger Gregory couldn’t resist inserting some puns into his summation when he wrote: “Like a fine cheese, this case has matured and is ripe for our review,” before going on to affirm the unanimous three-panel decision.

In doing so, the panel upheld a US Patent and Trademark Office (USPTO) ruling that ‘gruyere’ can legally be used to describe cheese no matter where it was made, rejecting a bid by French and Swiss cheese consortiums to claim exclusive rights to the mark.

An ‘unnerving’ decision

For  Florian Poncin, senior associate at Brucher Thieltgen & Partners, the ruling is an “unnerving one” for EU-based food and drink producers. “Any geographically specific or traditional food could be impacted by this decision. One could read it as meaning that the US market for these products is now open to unfair competition, which it was not before,” he says.

US dairy associations hailed the ruling as a victory. US Dairy Export Council president Krysta Harden described it as an “outstanding result for manufacturers and farmers here in the US”.

Meanwhile, the Swiss and French consortiums have vowed to continue to "pursue vigorously" their efforts to protect the Gruyère name.The uproar is unsurprising: after all, this particular cheese is named after the Gruyère region in the French and Swiss Alps, in which it originated nearly 1,000 years ago.

And for more than two decades, Gruyère has been recognised as a Swiss Geographical Indication in the EU, while the French variety is protected as a Protected Geographical Indication, also within the EU.

So why, when replete with this heritage and protections, did the cheese consortiums fail to make their case across the pond? And what does this mean for EU producers in similar situations striving to protect and enforce their rights in the US?

Just a ‘cheese with holes’

According to  Aurélia MARIE, of counsel at Beau de Loménie, this decision puts a spotlight on the lack of international harmonisation in this area. The US, she notes, is still not a member of the  Lisbon Agreement that gives international protection to geographically protected products.

This situation is not new, she adds, predicting that the case will not bode well for the protection of other European products in the US. French wines have also faced difficulties in garnering US protection as their mark has been deemed as generic, most notably in the cases of Bourgogne, Chablis, Champagne, Moselle, Claret, Haut-Sauternes and Sauterne.

Timothy Getzoff, IP partner at Holland & Hart, believes that the case could have gone either way but, ultimately, the final decision came down to numbers. Quite simply, more people in the US believe that Gruyère is simply a ripened cheese with holes, compared to those who recognise it as a distinctly Alpine variety.

As he points out, the consortiums first applied for their US mark in 2010, which “is at least a decade, if not several decades, too late”.“This is another example of a purported trademark owner who failed to make timely efforts to protect and restrict the usage of its mark,” he reflects.

“The outcome of this turned on the history in the US of the use of ‘gruyere’, in terms of its use by the general public as well as the various regulatory agencies involved in food products,” he explains.

He draws comparisons to what happened with aspirin, nylon, and escalator— all words that originally denoted brands but which became generic when they fell into common usage.

“The main problem for the consortiums was that too many years passed during which the word ‘gruyere’ was used in the US to mean a type of cheese, like cheddar or jack, and not as a specific geographic region where the cheese originates.”

Finnegan associate  Patrick Rodgers agrees that the successful parties created a comprehensive—and persuasive—record of evidence showing that the US general public who buy or consume cheese primarily understood the disputed term to refer to a general type of cheese, not a cheese made in a specific place in a specific way.

“The lynchpin of this evidence consisted of sales records showing ‘hundreds of thousands of pounds of cheese produced outside the Gruyère region of Switzerland and France’, which was sold in the US labelled as such, along with references to common uses of the name in the media,” says Rodgers.

No US geographic restrictions

In another blow for the consortiums, the Fourth Circuit gave short shrift to the fact that  “Gruyère” was a protected designation of origin in Switzerland, and a protected geographical indication in France.

Instead, US  Food and Drink Administration’s own standards, which place less emphasis on geographic restrictions, held sway. Additionally, the consortiums faced an uphill struggle given the precedent set in a 1986 decision from the Trademark Trial and Appeal Board.

In that case, In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, the board decided that Fontina was used in the US to refer to a generic type of cheese, not cheese from the Valle D’Acosta region of Italy.

A matter of identity

But why such different viewpoints between the two jurisdictions? It mainly comes down to the cultural disparities between the US and Europe.

According to Poncin, for the EU judges, legislators and citizens, this ‘Gruyère’ case would be viewed as “less a legal and commercial battle than a matter of principle and identity”.

This, he believes, is most likely due to the fact that culinary traditions are viewed as an essential part of EU culture and history. “While the US does have unique foods and drinks, this relatively young country does not have an almost religious obsession with centuries-old recipes.”

The US has fewer regulations regarding the naming of certain types of foods, concurs Getzoff.

“European countries have always placed a greater priority on protecting the historical and cultural methods for producing certain types of food, especially wine and cheese.”

In addition, he points out that because this case was filed in the US under US trademark law, this case turned on how the US public and the US agencies used the word ‘gruyere’, and not how Europeans perceive this word.

Also, in a stroke of bad luck for the Swiss and French cheese producers, the Fourth Circuit found no alternative names for the cheese in the record. For food producers, Getzoff explains, establishing the existence of a generic alternative to their mark can be a surefire way of protecting their mark.

For example, the Italian makers of Reggiano cheese successfully gained US registration when they identified parmesan as an alternative generic name for its product.

Similarly, France-based Roquefort cheese was also able to secure a US mark, after sheep’s milk blue-mould cheese was identified as an alternative generic.

Limited means

But not all food producers are as fortunate, and many could find themselves in the same quandary as the French and Swiss Gruyère consortiums. As Poncin notes, this ruling means that they now have only limited means available to protect and enforce their rights in the US.

While patents and trademarks are potential viable solutions, he adds, they are expensive, difficult to enforce from abroad and not always available for small producers

“In addition, patents are usually not fit for traditional foods and drinks in the sense that the ‘priority rule’ makes it so that processes that are already known before a request for patentability cannot legally be protected,” he adds.

“When this rule is applied to sometimes centuries-old recipes, one can understand why a patent is not the ideal solution.”

Too little, too late

Trademarks, he mulls, “might be the easier way out from this conundrum” although the consortiums, as well as companies in similar positions, face substantial hurdles in the marketplace.

They can unveil new trademarks to protect their products but there is a caveat: new wordings will probably not be as famous and well-received as the word deemed to have fallen into generic usage.

In Getzoff’s view, there is much to be learned from this case, and the steps that should be taken to ward off claims of generic use.

“In cases such as this, the owner of a mark must be diligent and take sufficient efforts to prevent the mark from falling into commonplace usage as the common name of the item.”

The takeaway, he warns, is that the French and Swiss consortiums did too little, too late to protect the word ‘Gruyère’.”