Say Cheese: How Foreign Producers Can Learn From Gruyère’s Failed Journey to Protected Geographic Indication in the United States

Photo by Alexander Maasch on Unsplash

Bennett Herbert, Associate Member, University of Cincinnati Law Review

I. Introduction

Geographical indications (GI’s) are a subset of trademarks that have caused controversy in recent years.[1] Like standard trademarks, geographical indications are source identifiers that guarantee quality and are valuable business interests to those who hold them.[2] These often come in the form of specialized foods or drinks from regions throughout the world used in a compound form.[3] However, if applied too broadly, GI’s can provide unfair trade barriers to generic names that have become a part of the public domain.[4] The effort of Swiss and French associations to obtain protected geographical indications (PGI’s) for Gruyère cheese is a recent example of this debate.

Part II of this article gives a background to geographical indications and Gruyère cheese. Part III analyzes the difference between the American and European approaches to geographical indications and how foreign producers can learn from Gruyère to improve their chances of earning American geographic protection.

II. Background

Geographic indications are a controversial subset of trademarks that most often apply to specialized food or beverage products that are primarily grown or processed in one part of the world.[5] Gruyère cheese is one of the most recent examples of a food product seeking GI protection from various jurisdictions worldwide.[6]

A. Geographical Indications

A geographical indication is defined at Article 22(1) of the World Trade Organization’s (WTO) 1995 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographic origin.”[7]

Geographical indications serve the same functions as trademarks because, like trademarks, GIs are: (1) source-identifiers; (2) guarantees of quality; and (3) valuable business interests.[8] Most commonly, GI’s come in the form of a sign used on products with a specific geographic origin and possess qualities or a reputation due to that origin.[9] A mark must identify a product as originating in a given place to function as a geographical indicator.[10] The product’s characteristics or reputation should be largely due to the place of origin, and there should be a clear link between the product and its place of production.[11]

The most common GI’s are specialized foods or beverages produced, processed, or prepared in a specific location in the world.[12] Some of the most common GI’s include Champagne (sparkling wine from the Champagne region of France), Kalamata Olives (grown in a certain region of Greece), and Irish Whiskey.[13]

Protections for geographical indications are normally acquired with a right over the sign that constitutes the indication.[14] A geographical indication right enables the holder of the right to prevent its use by a third party whose product does not conform to the applicable standards.[15] However, GI’s do not allow the holder to prevent someone from making a product using the same techniques as those from the indication.[16]

B. Gruyère Cheese

Gruyère is a hard, yellow cheese that was historically produced in the valleys along Switzerland and France’s border.[17] It was most likely originally named after the town of Gruyères.[18] Gruyère is sweet but slightly salty, and its flavor varies widely with age.[19] Swiss Gruyère is the most popular Swiss cheese throughout most of Europe.[20] A special variety of Gruyère, called Le Gruyère Premier Cru, is the only cheese that has won the title of best cheese of the world at the World Cheese Awards four times, most recently in 2015.[21]

In 2011, Swiss-made Gruyère gained protected geographical indication (PGI) in Europe with a bilateral agreement between the Swiss government and the European Union.[22] In 2012, the European Commission granted French-made Gruyère PGI status.[23] In August of 2020, the U.S. Patent and Trademark Office (USPTO) rejected applications from Switzerland and France to trademark Gruyère, finding that it is a generic term.[24] However, Swiss producers can identify their particular Gruyère cheese in the United States with the logo “Le Gruyère Switzerland AOC,” which was approved by the USPTO in 2013.[25]

III. Discussion

International disagreements concerning geographical indications have resulted in recent controversies regarding which products earn geographic protection in varying parts of the world.[26] Gruyère cheese is an example of this conflict and gives insight into how foreign producers can avoid being denied geographic protection in the future.

A. American v. European Approaches to GI’s

Most of the conflict between the way the United States and European nations approach geographical indications stems from what is considered a genuine product. European courts interpret many types of foods and beverages as being specific property of a geographic area.[27] For example, even if a brewery in Hungary crafted a beer with identical ingredients and processes as Bayerisches Bier (a beer produced in the Bavaria region of Germany), that brewery could not call their beer “Bayerisches.”

Conversely, the United States has historically construed the naming to be a matter of intellectual property.[28] Therefore, a farm that produces a certain cheese in America could maintain their trademark for that cheese if they begin to also produce it in a completely different region of the country. However, the U.S. has begun adopting the European approach to GI’s with respect to some crops (Florida oranges; Idaho potatoes), wines, and spirits (Tennessee whiskey).[29]

B. Impact on Gruyèere Cheese and Future Products

When rejecting Gruyère as a trademark in 2020, the USPTO relied heavily on how American consumers perceive a name.[30] First, the USPTO noted that Switzerland and France had been exporting Gruyère into the United States for over 30 years before filing for a trademark.[31] Further, the USPTO recognized that the FDA’s definition of Gruyère did not once mention the region it was produced and instead focused on its flavor, production process, and physical characteristics.[32]

Foreign producers should note the USPTO’s reasoning for ruling Gruyère a generic term, especially because it is the same line of thinking that led to “Asiago” and “Parmesan” being rejected in the years prior.[33] Foreign producers can give themselves a better chance of earning geographical protection from the USPTO by more proactively and creatively asserting the regional component of their product in the American marketplace to achieve consumer recognition and a brand reputation. This could include aggressive advertising techniques, monitoring and dispelling improper uses from other producers or FDA descriptions, and filing for a trademark early (before the product name has become generic).

IV. Conclusion

Despite the United States’ occasional adoption of the European approach to geographical indications for crops and spirits,[34] the USPTO continually interprets foreign products such as Gruyère, Parmesan, and Asiago to be generic terms that therefore do not meet the criteria to earn trademarks in the United States.[35] The USPTO will be more likely to award these types of products a trademark due to their place of origin in the future if the terms are seen as being less generic to the American public. Therefore, foreign producers can improve their chances by focusing their efforts on marketing the regional aspect product, educating the public on the origins of the product, and enforcing other parties’ misuses before filing for a trademark.

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[1] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[2] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[3] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[4] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[5] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[6] French “Gruyère” Cheese Named as Protected Geographic Indication (PGI), FRENCH FOOD IN THE US (May 5, 2015), https://frenchfoodintheus.org/880

[7] 1869 U.N.T.S. 299

[8] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[9] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[10] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[11] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[12] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[13] Daniel Rosario and Clemence Robin, Geographical Indications – A European Treasure Worth €75 Billion, EUROPEAN COMMISSION (April 20, 2020), https://ec.europa.eu/commission/presscorner/detail/en/IP_20_683

[14] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[15] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[16] Martijn Huysmans, Exporting Protection: EU Trade Agreements, Geographical Indications, and Gastronationalism, Rev. of Int’l Political Economy (2020).

[17] Danilo Alfaro, What is Gruyère Cheese?, THE SPRUCE EATS (June 15, 2020), https://www.thespruceeats.com/what-is-gruyere-cheese-995709

[18] Danilo Alfaro, What is Gruyère Cheese?, THE SPRUCE EATS (June 15, 2020), https://www.thespruceeats.com/what-is-gruyere-cheese-995709

[19] Danilo Alfaro, What is Gruyère Cheese?, THE SPRUCE EATS (June 15, 2020), https://www.thespruceeats.com/what-is-gruyere-cheese-995709

[20] Sylvie Lortal, Handbook of Food and Beverage Fermentation Technology, Chapter 16 (2004).

[21] Amy Brice and Tortie Farrand, Le Gruyère AOP Premier Cru Crowned World Champion Cheese 2015, THE GUILD OF FINE FOOD (Nov. 30, 2015), https://gff.co.uk/press-releases/le-gruyere-aop-premier-cru-crowned-world-champion-cheese-2015/

[22] Mark Astley, French Gruyère Cheese Granted EC Protected Geographical Status, DAIRY REPORTER (Dec. 10, 2012), https://www.dairyreporter.com/Article/2012/12/10/French-Gruyere-cheese-granted-EC-protected-geographical-status#:~:text=French%20Gruyere%20cheese%20has%20been,linked%20to%20a%20geographical%20area

[23] Mark Astley, French Gruyère Cheese Granted EC Protected Geographical Status, DAIRY REPORTER (Dec. 10, 2012), https://www.dairyreporter.com/Article/2012/12/10/French-Gruyere-cheese-granted-EC-protected-geographical-status#:~:text=French%20Gruyere%20cheese%20has%20been,linked%20to%20a%20geographical%20area

[24] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[25] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[26] Andrea Zappalagilio, The Protection of Geographical Indications: Ambitions and Concrete Limitations, 2 U. of Edinburgh Student Law Rev. 88 (2015).

[27] 98 Caroline Le Goffic and Andrea Zappalaglio, The Role Played by the U.S. Government in Protecting Geographical Indications (2017).

[28] 98 Caroline Le Goffic and Andrea Zappalaglio, The Role Played by the U.S. Government in Protecting Geographical Indications (2017).

[29] 98 Caroline Le Goffic and Andrea Zappalaglio, The Role Played by the U.S. Government in Protecting Geographical Indications (2017).

[30] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[31] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[32] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[33] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/

[34] 98 Caroline Le Goffic and Andrea Zappalaglio, The Role Played by the U.S. Government in Protecting Geographical Indications (2017).

[35] U.S. Consumers Benefit as CCFN and Allies Successfully Defend Generic Name “Gruyère” in the United States, PERISHABLE NEWS (August 7, 2020), https://www.perishablenews.com/deli/u-s-consumers-benefit-as-ccfn-and-allies-successfully-defend-generic-name-gruyere-in-the-united-states/