Dispute over the Use of 'Parmesan' in Trademarks

The Parmigiano Reggiano Consortium claims that Italy’s renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. Scott Hervey and Jamie Lincenberg discuss how they plan to fight off these counterfeits on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Scott:
The Parmigiano Reggiano Consortium claims that Italy’s renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. And the consortium is seeking to fight off the cheap imitations through lawsuits and through technology. I’m Scott Hervey from Weintraub Tobin. I’m joined today by my colleague, Jamie Lincenberg. We are going to talk about when Parmesan cheese isn’t Parmesan cheese on this next installment of the Briefing by Weintraub Tobin. For those who may not know, Parmigiano Reggiano traces its history back to the Middle Ages. In 1996, the European Union recognized a protective designation of origin, or a PDO, for Parmigiano Reggiano. According to the PDO, this cheese can only be produced in a small geographic area of northern Italy, which includes Parma and Reggiano. A PDO designation is used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO designation guarantees that the food product originates in that specific region or follows a particular traditional production process.

Jamie:
If I’m recalling correctly, there was a legal issue involving a challenge to Germany permitting the sale of cheese branded as Parmesan, but it didn’t meet the PDO designation requirements. Germany argued that Parmesan was a generic term for a type of cheese often grated over food and could not be called uniquely Italian. A European Court of Justice, hearing the dispute, finally held that Parmesano Reggiano is the only type of cheese that can be called Parmesan within Europe and that Parmesan is not a generic term.

Scott:
That’s right. And that’s why when you go to Italy or other members of the European Union when you buy Parmesan, you’re buying Parmesan or Reggiano. But that ruling and the PDO is only binding within the European Union. Now, the consortium is taking steps to try to prevent the sale of what it calls counterfeit Parmesan cheese outside of the European Union. This includes filing various certification marks with trademark offices throughout the world, which includes the United States. Under the Trademark Act, a certification mark is used to certify regional or other origin, material, motive, manufacture, quality, accuracy or other characteristics of goods or services or that the works of labor on the goods or services was performed by members of a union or other organization. With regard to the certification mark, Parmesan or Reggiano, it certifies that the cheese that is branded Parmigiano Reggiano originates in the Parma Reggiano region of Italy.

Jamie:
So what about Kraft? We all know that green can of Kraft Grated cheese. I assume Kraft has the right to use that mark.

Scott:
Kraft does have various registered trademarks in the US. Covering its product, but the consortium seems to be fighting Kraft’s use of Parmesan. Last year, the consortium filed the equivalent of an opposition with the Australian Trademark Office challenging Kraft’s application for its Parmesan cheesemarks in Australia. The consortium argued that Kraft’s use will confuse consumers. Kraft argued that the term Parmesan is generic for a certain style of hard cheese Kraft’s position that Parmesan is generic for a certain style of hard cheese is supported by the fact that Kraft has disclaimed the term parmesan in its trademark applications in and outside of the United States.

Jamie:
A mark owner trying to register its mark is required to disclaim the right to use a word that is part of the mark when that word is either descriptive or generic. The reason behind this is that merely descriptive or generic words should be free.

Scott:
For all of us to use, that’s right, under the US Trademark law, a mark is merely descriptive if it immediately conveys knowledge of a quality, a feature, a function, or a characteristic of the goods or services with which it is used. And the test for generalness is comprised of two parts. The first part being what is the genus of the good or services at issue? And two, does the relevant public understand the designation primarily to refer to that genus of goods or services? So with regard to Parmesan, the first part of the generic test would be the genus being cheese. And the second part does the relevant public understand the designation primarily to refer to that genus meaning cheese? And I think in the United States, it clearly does.

Jamie:
So how did the consortium fare in its challenge in Australia?

Scott:
Well, Kraft had been selling its product in Australia since 1966. The Australian Trademark Office said that it was highly unlikely that Australian cheese consumers would confuse Kraft’s jarred product with the wedges of Parmesano reggiano produced in Italy. Apparently, the consortium is appealing this decision. Now, the consortium has also opposed Kraft’s application in New Zealand, in Ecuador, and in Singapore, and in Ecuador and Singapore, the consortium prevailed.

Jamie:
But in the United States, kraft is not likely to be divested of its right to use Parmesan. It seems that the term parmesan is generic in the United States. But, Scott, at the top of this story, you said that the consortium is also using technology to tackle counterfeiting. What does that entail?

Scott:
Right, I did. So it seems that the consortium is now requiring its cheesemakers to insert a microchip into the label found on the rind of its cheese wheel. These microchips allow consumers to scan the cheese rind and then track the product back to their point of origin. Obviously, this is not a legal issue, but I thought it was kind of cool.

Jamie:
So we’re now microchipping cheese?

Scott:
We are now microchipping cheese. And apparently, by the way, these microchips have also been tested for food safety, and they are apparently very safe to eat.

Jamie:
Well, this discussion is making me very hungry.

Scott:
Yeah. Time for a nice plate of pasta.

Jamie:
Thanks, Scott.

Jamie:
Thanks for listening to this episode of the Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today. Please leave us a comment.