It was in fair Verona where the adage was first professed, “What’s in a name? That which we call a rose by any other name would smell as sweet.”[1] The question, posed by Juliet in her earnest attempt to rationalize her love for a Montague, is the same one courts face today when presented with the issue of protecting international Geographical Indications (“GI”). They ask, what’s in a name? In the case of gruyère, the answer was – nothing special.
On January 6, 2022, a U.S. District Court upheld a 2020 U.S. Patent and Trademark Office’s ruling that gruyère cheese does not have to come from the Gruyère region of Switzerland to be sold under this name.[2]The U.S. Dairy Export Council’s argument that the gruyère name is “generic” in the eyes of the American consumer, ultimately won the day.[3] While it was conceded that the term previously referred exclusively to cheese produced within the Gruyère region, the court held that “decades of importation, production, and sale of cheese labeled gruyère produced outside of the Gruyère region . . . have eroded the meaning of that term and rendered it generic.”[4]
The consortium of Swiss and French cheese producers argued the gruyère name, as protected by their GI status in the EU, is associated only with the cheese produced in specific regions following the traditional recipe that has been utilized since 1115.[5] Furthermore, because all gruyère cheese makers are required to follow the strict AOP specifications, cheese produced elsewhere is not equivalent.[6] Despite utilizing a similar argument as the successful French Champagne producers, the gruyère cheesemakers seem to have failed.[7]While the court’s ruling has been appealed, as it stands today, gruyère is likely to sit on the shelf alongside “generic” cheddar (no longer a cheese only made in Cheddar, UK)[8], rather than attain the esteemed American-protected GI status of Champagne, Roquefort, Prosciutto di Parma, and Cognac.[9]
This case is representative of the ongoing disagreements between the United States and European Union over the proper enforcement and recognition of GIs. A product can be granted a ‘geographical indication’ if it has a special link to the place where it was made.[10] As outlined in Article 22.1 of the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), GIs identify goods as originating in a specific territory, region, or locality where “a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”[11] GIs include the name of the place of origin (e.g. Gruyère, Darjeeling, and Roquefort), non-geographic names (e.g. Argan Oil and Feta), or symbols commonly associated with a place.[12]
There are several reasons a producer may want to establish a GI. First, it encourages transparency and prevents against product misappropriation.[13] Second, it enhances brand recognition and marketing efforts. A GI designation allows a company to signal to a consumer that their product is of a specific place of origin and, therefore, carries a particular quality they may value. In turn, consumers may be willing to pay more for the product.[14] Third, GIs may contribute to rural economic development by promoting local employment creation and international awareness of an entire region.[15] Finally, GIs are also used as a means to “preserve traditional knowledge and cultural expressions” as products are often the result of traditional processes transferred down through the generations.[16] Critics of GI protections have counter-points to each of the above, but primarily argue that GIs are methods of market monopolization and inhibitors of fair trade and competition.[17]
The TRIPS Agreement previously referenced applies to all World Trade Organization members and establishes a baseline standard for establishing and enforcing GIs internationally.[18] However, each country is permitted to have their own system for designating origins and granting protection to foreign GIs.[19] As a result, products registered as GIs within a specific region are legally protected against imitation and misuse only within that region. [20] To protect GIs abroad, producers must: (i) appeal directly in the jurisdiction concerned (as the gruyère cheese producers were trying to do); (ii) enter a bilateral agreement with other states or commercial partners, or (iii) utilize one of the International Registration Systems associated with the Lisbon Agreement for the Protection of Appellations of Origin or the Madrid System for the International Registration of Marks.[21]
Unfortunately for the Swiss and French consortium of gruyère cheesemakers, the only avenue for their GI to be recognized in the United States is via trademark law.[22] Options two and three, while possible in other countries, are largely unavailable in the United States.[23] Thus, they are at the mercy of the court and the court’s interpretation of Article 24 of the TRIPS Agreement which allows a WTO member not to protect a GI when its use is “customary in common language as the common name for such goods or services in the territory of that Member.”[24] And it’s this exception the court applied to gruyère.[25] “What’s in a name?” it asked. The answer it gave was ‘nothing more than a generic, common name.’ Thus, by upholding the Trademark Office’s ruling, the court permitted domestic cheesemakers to step in after 907 years of tradition and produce ‘gruyère’ cheese without repercussion.
[1] William Shakespeare, The Tragedy of Romeo and Juliet act 2, sc. 2, l. 890-1.
[2] Gruyere Declared a Common Cheese Name, Thwarting EU, National Milk Producers Federation (Feb. 2, 2022), https://www.nmpf.org/gruyere-declared-a-common-cheese-name-thwarting-eu/.
[3] The Associated Press, Gruyere cheese can still be called gruyere even if not from Switzerland, judge rules, NBC News (Jan. 11, 2022), https://www.nbcnews.com/news/us-news/gruyere-cheese-can-still-called-gruyere-even-not-switzerland-judge-rul-rcna11755.
[4] Id.
[5] Id.; Protected designation of Origin (AOP), Le Gruyère Switzerland AOP, https://www.gruyere.com/en/le-gruyere-aop/protected-designation-of-origin-aop (last visited Feb. 4, 2022).
[6] Id.
[7] Planet Money: Court rules Gruyère ‘too generic’ and U.S. companies can make the cheese, CPR News (Jan. 28, 2022), https://www.npr.org/2022/01/28/1076306282/court-rules-gruyere-too-generic-and-u-s-companies-can-make-the-cheese.
[8] TRIPS: Geographical Indications, Background, WTO (Nov. 2008), https://www.wto.org/english/tratop_e/trips_e/gi_background_e.htm.
[9] Geographical Indications: An Introduction, World Intellectual Property Organization, 6 (2021), https://www.wipo.int/edocs/pubdocs/en/wipo_pub_952_2021.pdf.
[10] Aims of EU quality schemes, European Commission, https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/certification/quality-labels/quality-schemes-explained_en (last visited Feb. 4, 2022).
[11] Agreement on Trade-Related Aspects of Intellectual Property Rights (unamended) art. 22, Apr. 15, 1994, Marrakesh Agreement Establishing the World trade Organization, Annex 1C, https://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm [hereinafter“TRIPS Agreement”].
[12] Geographical Indication: An Introduction, supra note 9 at 7.
[13] Id. at 12.
[14] Id. at 13.
[15] Id. at 15.
[16] Id. at 16.
[17] K. William Watson, Reign of Terroir: How to Resist Europe’s Efforts to Control Common food Names as Geographical Indications, CATO Institute (Feb. 16, 2016), https://www.cato.org/policy-analysis/reign-terroir-how-resist-europes-efforts-control-common-food-names-geographical#the-u-s-approach-nbsp.
[18] Frequently asked questions about TRIPS [trade-related aspects of intellectual property rights] in the WTO, WTO, https://www.wto.org/english/tratop_e/trips_e/tripfq_e.htm#Who’sSigned (last visited Feb. 4, 2022).
[19] Id.
[20] Aims of EU quality schemes, supra note 10.
[21] Geographical Indication: An Introduction, supra note 9 at 33.
[22] K. William Watson, supra note 17.
[23] Id.
[24] TRIPS Agreement, supra note 11, §24.
[25] The Associated Press, supra note 3.
