Must 'Parmesan' Be 'Italian Made'?

There are many examples of products that, by definition, exclusively originate from a designated region or country.  If those exact products were to be produced elsewhere, it would need to be called by a different name.  To give a few examples:

• Champagne, the sparkling wine, must originate from the region of Champagne in France, which is located just outside of Paris.  Otherwise, if the beverage is made elsewhere, it may just be called by some other descriptor of sparkling wine.
• Tequila, a distilled beverage made from the blue agave plant, primarily produced in the area surrounding the town of Tequila in Mexico.  In 1974, Tequila became Mexico’s first appellation of origin, and in 1978 it was internationally registered for protection under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.  Tequila must originate from specific regions in Mexico, otherwise the beverage may be called Mezcal or simply an agave spirit.
• Scotch, an alcohol made from malted barley in Scotland.  In order to be classified as Scotch, the alcohol must mature for three years or more in oak casks of a capacity not exceeding 700 litres, have a minimum of 40% alcohol by volume, and be distilled at a distillery in Scotland from water and malted barley.  

Each of the above examples are examples of products where the origin of the product will determine what the product may be called. 

A similar argument was run in the case of Consorzio Del Formaggio Parmigiano Reggiano v Kraft Foods Group Brands LLC [2022] ATMO 166 (CDFPR v Kraft) that was delivered in September last year in relation to Parmesan cheese, where it was argued that Parmesan cheese is Parmigiano Reggiano cheese, and therefore the term Parmesan should only refer to cheese that is produced in Italy.

CDFPR v Kraft

In CDFPR v Kraft, Kraft Foods Group Brands LLC (Kraft) registered the trademark of ‘KRAFT PARMESAN CHEESE’, which was opposed by a consortium of Parmigiano Reggiano cheese producers in Italy that represent interests of Parmigiano Reggiano cheese producers who are called the Consorzio Del Formaggio Parmigiano Reggiano (CDFPR). 

CDFPR owns 4 registered Australian certification trade marks and one standard registered mark consistent of or containing ‘Parmigiano Reggiano’.  CDFPR based its opposition upon section 43 and section 60 of the Trade Marks Act 1995 (Cth) (Act). 

CDFPR’s position

CDFPR intended to provide evidence to show that: ¹

• Parmigiano Reggiano is a cheese that can only be sourced form a region of Italy, and cannot be made in Australia or elsewhere;
• the term “Parmesan” is used in Australia to refer to “Parmigiano Reggiano”;
• the terms “Parmesan” and “Parmigiano Reggiano” are used interchangeably to indicate Parmigiano Reggiano cheese exclusively; and
• CDFPR has a “reputation” (in the legal sense pursuant to s 60 of the Act) in the term Parmesan.

Part of the evidence provided by CDFPR included that “Parmesan” is the literal translation of “Parmigiano”,² the terms “Parmesan” and “Parmigiano Reggiano” have been used interchangeably in Australia on certain online databases and newspaper articles,³ CDFPR advertised Parmigiano Reggiano at food festivals as “The Only Parmesan”,⁴ and of over 1,000 Australians surveyed almost 25% of them thought that Parmesan cheese is a cheese made exclusively in Italy.⁵

Kraft’s position

Kraft intended to provide evidence showing “Parmesan” is a generic term in Australia that is used by numerous traders to refer to a style of hard cheese produced in Australia and various other countries.  

The evidence provided by Kraft included that it had commenced its selling of Parmesan cheese in the United States of America since 1945 and in Australia since 1966,⁶ there are at least 16 different Parmesan cheese manufacturers within Australia,⁷ the Australian Dairy Industry Council regards Parmesan cheese as a generic term in Australia to indicate a particular style of hard cheese,⁸ and Kraft gave evidence from a market intelligence and research organisation showing other, non-Italian, Parmesan cheese products for sale in Australia.⁹

Opposition on grounds of s 43

Section 43 of the Act provides:¹⁰

”An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.”

Section 43 of the Act has been made out to involve two stages, being 1) that there is a connotation in the trade mark, and 2) because of the connotation, use of the trade mark would be likely to deceive or cause confusion.¹¹

In considering the opposition by CDFPR, the Hearing Officer found that while the terms Parmigiano Reggiano and Parmesan are sometimes used interchangeably, such uses often suggest that Parmigiano Reggiano is a type of Parmesan rather than Parmesan being used to exclusively refer to Parmigiano Reggiano.¹²  Therefore, Parmigiano Reggiano is a subset of the larger category of Parmesan cheeses.

The Hearing Officer was not persuaded when presented with recipes by CDFPR showing that Parmesan and Parmigiano Reggiano had been used interchangeably, and therefore that should result in the inference that Parmesan exclusively refers to Parmigiano Reggiano.   

The Hearing Officer stated that the relevant question to ask is whether Australian consumers consider that Kraft’s use of the term Parmesan contains a connotation that: ¹³

• the cheese being sold is Parmigiano Reggiano, or
• originates from Italy or is associated with Italy,

and as a result of that connotation the Australian consumers will be deceived or confused by the origin of the cheese sold under Kraft’s trade mark.

In considering this question, the Hearing Officer considered the case of Scotch Whisky Association v De Witt [2007] FCA 1649 (Scotch Whisky) where consumers can be divided into two groups, being “involved” and “uninvolved”.  Scotch Whisky stands for the proposition that it is necessary to consider more than one class of consumer where a class may constitute a significant number of consumers. 

In relation to Parmesan cheeses, there are numerous retailers of cheese, restauranteurs, customers of high-end restaurants and other Australian consumers of cheese (i.e. “informed” cheese consumers) who would understand Parmesan to be the anglicised version of Parmigiano Reggiano, and would use the term Parmesan to refer to Parmigiano Reggiano.  However, the Hearing Officer found that it was unlikely that these “informed” cheese consumers would be confused by the use of the trademark Parmesan:¹⁴

The Hearing Officer found that the CDFPR’s opposition on the grounds of s 43 was unsuccessful, and further found that Australian consumers of cheese, whether “informed” or “uninformed”, would understand that Parmesan has more than one signification:¹⁵

In Australia, the more commonplace signification of Parmesan is a style of cheese and this is the overwhelming message that I expect consumers will receive from the Trade Mark.

Opposition on grounds of s 60

Section 60 of the Act provides:¹⁶

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

1. another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those services, acquired a reputation in Australia; and
2. because of the reputation of that other trade mark, the use of the first-mentioned trade would be likely to deceive or cause confusion.

To be successful in an opposition based on s 60, it must be established that:

• another trade mark had acquired a “reputation” in Australia before the date the trademark was filed; and
• because of the reputation of that trade mark, use of the trade mark would cause deception or confusion.

For the purposes of s 60, “reputation” means “recognition of [the mark] by the public generally”.¹⁷  Reputation may be demonstrated in various ways including by demonstrating a significant number of people are exposed to the trade mark.  In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions.¹⁸ 

The Hearing Officer rejected CDFPR’s opposition based on s 60 for the same reasons that the Hearing Officer rejected the opposition based on s 42, being that:

• the “informed” purchaser of cheese who may be of the type to use the terms Parmigiano Reggiano and Parmesan interchangeably, would also understands that Parmesan is used in Australia more generally to indicate a style of cheese which is not necessarily from Italy; ¹⁹  and
• the “uninformed” consumer does not know of Parmigiano Reggiano or understands it to be a type of Parmesan but thinks that there are other types.²⁰

An appeal has been filed by CDFPR in the Federal Court of Australia, which is expected to be heard later this year. 

Lavan Comment

There are several Intellectual Property ‘quirks’ that need to be considered when one is branding products.  Sometimes, it is incumbent on an organisation to consider international legislation and registrations, and carefully consider if the source of the product will impact the name the product may go by.

Had CDFPR been successful in showing that the term Parmesan should only equate to cheeses made in Italy, then our local supermarket shelves may be stocked with many more “Parmesan style” cheese as opposed to pure, Australian made Parmesan.

If you would like to discuss how you can protect your brand or your product by using a trademark, or if you feel as though someone is infringing on your trademark or other intellectual property, please contact Iain Freeman, Partner of Lavan’s Intellectual Property & Technology practice team.