i. Summary
"Parmigiano Reggiano," also known as "Parmesan cheese," has been recognized as a protected designation of origin (PDO) for many years in various countries including Türkiye. The Parmigiano Reggiano Cheese Consortium (Consorzio del Formaggio Parmigiano-Reggiano) ("Consorzio") undertakes the production of this cheese. The Consorzio comprises approximately 3,500 milk producers. The Consorzio likewise seeks to guarantee that the Parmesan cheese produced all around the world also meets these certain criteria. Therefore, the Consorzio takes every possible step to protect the local taste and production of its product. All over the world, it seeks to protect under geographical indication status not only products bearing the "Parmigiano Reggiano" designation, but also products bearing the "Parmesan/Parmigiano" phrase and versions of this phrase, which is a translation from Italian. The Consorzio is fighting a legal battle in many countries to ensure this protection and to prevent the deterioration of this widely consumed Italian delicacy. The Consorzio, generally adopting the European perspective, argues that to enforce a geographical indication registration, consumers need not necessarily be confused or misled, and that the use of terms or images that are unlikely to cause confusion but that may evoke or suggest a registered geographical indication should be prohibited.
In this piece, starting from one of the most recent developments, the IP Australia's (the Australia trademark office) decision on the use of "Kraft Parmesan Cheese," we will look back at the past decisions of Ecuador and the Court of Justice of the European Union (CJEU) and discuss the different perspectives on the scope of protection of the geographical indication registration of this special type of cheese. Considering the decisions from various countries and regions, it is clear that there are differences in understanding between Anglo-Saxon and Continental European legal systems in terms of commercial and legal protection aspects.
Do you think that the mere phrase "Parmesan"/"Parmigiano" used in cheese products reminds us of the famous cheese flavor produced in the Parma and Reggio region of Italy and registered as a geographical indication, or does it only remind us of a generic solid cheese product? Even if the mere use of "Parmesan"/"Parmigiano" in cheese and similar products does not create a likelihood of confusion for the consumer, if the mere use of the PDO "Parmigiano Reggiano" is evoked, should the Consorzio be able to prevent such uses? It is seen that these questions are answered from different perspectives in Anglo-Saxon and Continental European legal orders.
ii. Overview of geographical indication protection in Türkiye and the world
If a product has been produced in a region for a long time in accordance with traditional rules, it will become identified with that region and become a traditional product. The geographical indication system is important to prevent the marketing of a traditional product, which is intertwined with the cultural elements of a region and the society in that region, by others in a way that is incompatible with the way it is produced. A geographical indication is also a legal protection that will ensure the unchanged transfer of a product to future generations, where the region or production style creates a unique tradition. By attributing a geographical indication registration to a product, a protection will be ensured that such product will be produced in accordance with its origin and traditions.
In Türkiye, the Turkish Patent and Trademark Office can register geographical indications under certain criteria with protections such as PDO or protected geographical indication (PGI). The PDO are the products that take all their essential features from the elements specific to a particular region and are produced entirely in this region. Protected geographical indication means the products originating from a region with specific boundaries and at least one of the production processes is carried out in this specific region. There is also a Traditional Product Name mentioned in Turkish legislation. Names that are proven to have been used traditionally for at least 30 years to describe a product in the relevant market and that are not covered by the PDO or the PGI are defined as the traditional product name if some of the conditions are met.
At this point, the importance attributed to geographical indication protection in the EU and the work related to this should also be taken into consideration. There are three types of geographical indication protection in the EU: PGI, PDO and Traditional Specialities Guaranteed. PDO protection was created in 1992 and its main purpose is to identify products that are produced, processed and developed in a specific geographical area using the reputed knowhow of local manufacturers and components of the relevant region. Indications benefiting from PDO protection are recorded in the Register of Protected Designations of Origin and Geographical Indications (EU Quality Registry) maintained by the General Directorate of Agriculture and Rural Development of the European Commission. Applications, publications, registrations and all kinds of changes are recorded in the Database of Origin and Registration and this data can be accessed by anyone online.
The protection of these products is gradually being expanded internationally through bilateral agreements between the EU and non-EU countries. The purpose of this is to protect the reputation of local foods, to encourage rural and agricultural activities, to help producers obtain higher prices for their authentic products, to eliminate unfair competition and to prevent consumers from being misled by non-original products that may be of lower quality or different taste. There is no automatic protection for these phrases on products manufactured and sold outside the EU. These bilateral agreements are, for example, with the EU and Australia (wine, 1994), Canada (wine and spirits, 2003), Chile (wine and spirits, 2002), Colombia (coffee, 2007), Mexico (spirits, 1997) and South Africa (wine and spirits, 2002).
Therefore, the idea that a product that has gained a name for itself with its traditional style, rather than belonging only to a certain place, should be recognized and tasted by the whole world in the way that it is supposed to be produced, makes geographical indication protection very important. For example, geographical indications such as "Gaziantep Baklava," "Malatya Kayisisi" (Malatya Apricot) or the newest addition "Antakya Künefesi" are also registered in the EU. As a result of these geographical indications becoming famous in Türkiye and Europe just starting from the regions where they are traditionally created, the taste and smell of these places and products will come to mind when the phrases "Gaziantep Baklava" or "Malatya Kayisisi" (Malatya Apricot) are mentioned. For a similar purpose, the Consorzio obtains geographical indication registrations for the phrases "Parmigiano Reggiano" and "Parmesan cheese" all over the world and actively tries to exercise its rights arising from these registrations.
iii. Geographical indication protection on "Parmigiano Reggiano"
"Parmigiano Reggiano" is a well-known type of cheese produced in a traditional style in the Parma and Reggio region of Italy, subject to geographical indication protection. The wheel cheese that comes to mind when "Parmigiano Reggiano" is mentioned, is actually the impression left by the local production style of this product. Each wheel of "Parmigiano Reggiano" cheese is placed in storage for aging. Early in the aging process, while the cheese is still soft and creamy, some strict production criteria is applied to manufacture the final product. This cheese consists of only three ingredients (milk, salt and rennet) and takes its consistency with natural bacteria. Cows producing milk for this cheese are fed a specific diet. Today, the Consorzio also takes a technological approach to protecting this product by placing digital labels on the casein rind (the outer surface of the wheel cheese) of the 100,000 cheese wheels. This move is designed to benefit traceability, inventory tracking and control. It is also stated that this move was carried out with the aim of serializing products and improving consumer safety, as well as providing authentication and quality assurance for products.
In this context, the Consorzio has registered the phrase "Parmigiano Reggiano" as a PDO with the European Commission with the application number PDO-IT-02202. Following this, the Consorzio continued to register the phrase "Parmigiano Reggiano" as the PDO in various countries around the world, including Türkiye. "Parmigiano Reggiano (Parmesan Cheese)," which was applied for in Türkiye in 2011, was registered to Consorzio in 2017 with the registration number C2011/002.
iv. Various conflicts arising from the "Parmigiano Reggiano" geographical indication
The geographical indication journey of "Parmigiano Reggiano" cheese begins at this point. The Consorzio, with a strict protection strategy, wants to control the use of the phrase "Parmigiano Reggiano" across the world in accordance with the criteria of the PDO and tries to act wherever possible. Especially within the scope of recent developments, it is understood that the Consorzio wants to protect not only the phrase "Parmigiano Reggiano" but also "Parmesan"/"Parmigiano" and similar phrases. Here, our focus will be on whether the scope of protection of the "Parmigiano Reggiano" origin name can be extended to "Parmesan/Parmigiano" and similar phrases. In fact, the Consorzio wants to claim both "Parmigiano Reggiano" and its variations such as "Parmesan"/"Parmigiano" for a long time and wants geographical indication protection to be applied in its widest form not only in the EU but also all over the world. However, the fact that the commercial life is different in each country determines the importance assigned to geographical indication protection in the relevant region and makes it difficult for the Consorzio and other companies that want to use "Parmigiano Reggiano" and variations of this phrase such as "Parmesan"/"Parmigiano" to create a uniform application.
In the dispute over the recently issued IP Australia decision of 13 September 2022, the Consorzio has requested to replace the phrase "Kraft Parmesan Cheese" on boxes of dried powdered cheese found on supermarket shelves made by food giant Kraft Foods Group Brands LLC ("Kraft") in Australia. It has taken action on the grounds that the content of this phrase and the attempt to register this phrase as a trademark would create a possibility of confusion in the minds of consumers. IP Australia did not consider Kraft's use of the word "Kraft Parmesan Cheese" in relation to its powdered cheese products as a violation of geographical indication. IP Australia stated that the word "Parmesan" is used in Australia to refer to a type of cheese or flavoring and that this expression does not always point to cheeses made according to the procedures described as "Parmigiano Reggiano."
In its objection to the first decision of IP Australia, the Consorzio stated that the word "Parmesan" in the trademark application for "Kraft Parmesan Cheese" is the English translation of "Parmigiano Reggiano," and Australian consumers seeing the product bearing this phrase will expect it to be produced under strict conditions in Italy. The Consorzio said that the real "Parmigiano Reggiano" cheese is produced in a certain region of Italy in a way that maintains a certain quality and within the framework of strict rules, and that Kraft does not produce real "Parmigiano Reggiano"; however, the trademark application in the form of "Kraft Parmesan Cheese" and the use of this phrase on the products will create the likelihood of confusion in the eyes of the consumers. The Consorzio presented documents stating that the history of "Parmigiano Reggiano" cheese dates to the Middle Ages and that the first steps to protect the name were taken in the 1920s, and the scope of this protection is not only the use of "Parmigiano Reggiano" exactly the same as the name of the geographical indication, but also "Parmesan"/"Parmigiano," etc.
By contrast, Kraft has argued that "Parmesan" is a generic term for a type of hard cheese produced not only in Italy but also in Australia and various other countries. Kraft stated that it has sold the cheeses it produces and markets under the name "Kraft Parmesan Cheese" in the US since 1945 and in Australia since 1966. Kraft explained that the product's label does not specify where it was produced, except that it was "packaged in Australia from imported materials." IP Australia has stated that Australian cheese consumers are very unlikely to confuse Kraft's product with "Parmigiano Reggiano" made in Italy. Upon the rejection by IP Australia, the Consorzio appealed to the Federal Court of Australia to overturn the IP Australia decision. The file is still under review.
The Consorzio's drastic actions in Australia is not the only place it has taken action on this issue. As in Australia, Kraft wanted to get a trademark registration on the phrase "Kraft Parmesan Cheese" in Ecuador, but this time it was not successful. The Ecuadorian Intellectual Property Office (SENADI), after receiving Consorzio's objection request, stated on a 15 February 2022 that the phrase "Kraft Parmesan Cheese" applied by Kraft "shows significant similarities with the protected designation of origin and unfairly benefits from the reputation, quality and other features it owes only to the geographical environment in which it is produced"; therefore, it decided that the expression applied for cannot be registered as a trademark on the grounds that it would be misleading to consumers. This decision is important for the American continent. Likewise, this decision is an indication that geographical indication protection may be of greater importance in this part of the world compared to the commercial profit-oriented actions of companies.
The decision reaffirms the fundamental importance of the link between the PDO and the geographical area concerned. SENADI's decision is one that many international companies and trade associations do not want. With this decision, it has been revealed that the phrase "Parmesan"/"Parmigiano" is not perceived as a generic name, but a phrase that should be evaluated within the scope of the PDO protection assigned to it. The spread of such decisions may result in the extension of the scope of protection not only of the "Parmigiano Reggiano," but also of all geographical indications.
If we move from Australia and Ecuador to the European continent, we can see that the Ecuadorean point of view actually originates from the point of view of the EU. Of course, this attitude is not surprising given that the "Parmigiano Reggiano" cheese type originates from an EU member country: Italy. In 2008, the CJEU decided that only cheeses that meet the criteria for the PDO "Parmigiano Reggiano" can be sold under the name "Parmesan/Parmigiano" in the EU (Case C-132/05 Commission of the European Communities v. Federal Republic of Germany). In this landmark case in Europe, the European Commission, the executive body of the EU, initiated proceedings against Germany upon the Consorzio's complaint. In the case, it was alleged that the German government did not act, even though it was supposed to, against producers using the phrase "Parmesan"/"Parmigiano" on cheeses that did not meet the specification of the "Parmigiano Reggiano" PDO. The CJEU decided to perform a triple test for both visual and phonetic similarity and conceptual closeness between the terms being compared. Deciding against Germany, it ruled that the terms "Parmesan/Parmigiano" and "Parmigiano Reggiano" were not only phonetically and visually similar but were also conceptually close. Pursuant to the CJEU "(...) that proximity and the phonetic and visual similarities (...) are such as to bring to the mind of the consumer the cheese protected by the PDO "Parmigiano Reggiano", when he is confronted by a hard cheese, grated or intended to be grated, bearing the name "Parmesan". In those circumstances, the use of the name "Parmesan" must be regarded (...) as an evocation of the PDO "Parmigiano Reggiano". The question whether the name "Parmesan" is a translation of the PDO "Parmigiano Reggiano" is therefore of no relevance for the assessment of the present action." This decision of the CJEU confirmed that the Consorzio has control over a cheese product bearing the words "Parmigiano Reggiano" or "Parmesan/Parmigiano" in the territory of EU and also confirmed that "Parmesan" is not perceived as a generic term in the EU region.
v. Conclusion
There are two dimensions to the discussion of registering or using the phrase "Parmesan"/"Parmigiano" or the signs containing these phrases as a trademark in cheese products. While there is an approach that geographical indication coverage should be at the highest level in Europe, the use of this phrase is approached more liberally in Anglo-Saxon countries. In fact, in most of the review articles published in the Anglo-Saxon countries, the protection of the geographical indication registration on the phrase "Parmigiano Reggiano" being extended to prevent the use of terms such as "Parmesan"/"Parmigiano" is met with harsh criticism. In the Anglo-Saxon countries, it is understood that this point of view constitutes an obstacle to freedom in commercial life. On the other hand, in the EU, with the opposite point of view, the local production style of a product and the commercial rights of the producers who are entitled to make this local production seem more important than the competition in commercial life.
After discussing the debate created by the phrase "Parmesan/ Parmigiano" in different parts of the world, it is necessary to look at the Consorzio's actions in Türkiye. Looking at the trademark registry of the Turkish Patent and Trademark Office, there are 13 trademark registrations with the phrase "Parmesan." Six of these applications are invalid. These have been invalidated ex officio or upon objection due to the Consorzio's geographical indication registration number C2011/002 in Türkiye. Considering the importance the Consorzio attaches to the use and registration of the phrases "Parmesan/ Parmigiano" and "Parmigiano Reggiano" on products, and the actions taken toward this, it is seen that the Consorzio is active in Türkiye and across the world. There is no finalized case before the Turkish courts regarding the prevention of the attempt to register the phrase "Parmesan" as a trademark or the prevention of its use on products. In this regard, it is eagerly awaited to what extent the Turkish courts will evaluate the scope of "Parmigiano Reggiano (Parmesan Cheese)" geographical indication registration and whether they will prefer the Anglo-Saxon or European approach.
In our opinion, the terms "Parmesan" or "Parmigiano" do indeed connote the PDO "Parmigiano Reggiano." In countries where the protection attributed to the "Parmigiano Reggiano" PDO is not extended to the terms "Parmesan" or "Parmigiano," the average consumer may be tempted to buy a cheese product that appears to be of Parma and Reggio origin but has nothing to do with Parma or Reggio in reality, with the perception that this product has the characteristics of the PDO. Likewise, as SENADI stated in its decision: "It is clear that the requested brand may be deceptive and may affect consumers who cannot make an informed decision in the market." Indeed, what is important here is not the determination of whether the same phrase with the PDO is used in a third-party product. The important thing here should be to determine the perception created by the variation of this name for the consumers. If the relevant consumer remembers a registered geographical indication due to the term used and thinks that the product in question has the features of the PDO, and is wrong about the origin of the product, or if the manufacturer takes unfair advantage of this PDO, then the geographical indication must be deemed to be violated.
Bibliography:
https://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm#3
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