Asiago cheese needn’t come from Italy, IP Australia rules
Intellectual Property June 5, 2018 11:13 pm By Miklos Bolza | Sydney

IP Australia has ruled in part that cheese branded with the Asiago label need not be manufactured in the Asiago region in Italy, striking down an opposition to a trade mark filed by cheese producer Sartori Company.

The contested trade mark, Sartori Asiago, was filed on March 13, 2015 by Wisconsin-based cheese maker Sartori Company and later challenged by Consorzio Per La Tutela Del Formaggio Asiago (Consortium of the Protection of Asiago Cheese), an Italian association of cheese producers that provides quality control and licensing for Asiago cheese companies and that owns two Australian trade marks for “Asiago”.

The consortium argued that Sartori’s proposal to use “Asiago” for cheese manufactured in Wisconsin would violate the “Asiago” mark’s prior reputation throughout the world as a “badge of origin” for cheese produced in the Asiago region of Italy.

But delegate Debrett Lyons said that in assessing whether a mark was likely to deceive or cause confusion, what mattered was the reputation of the mark in the mind of the public.

Ordinary cheese-buying Australians would not regard Asiago as different from any other kind of cheese and would think of “Asiago” as a descriptive term, she said.

“Even if the evidence of the amount of ‘Asiago’ style cheese imported into Australia was a measure of the likely awareness of ordinary cheese buying Australians of the ‘Asiago’ name, it is not evidence that those people understood the term in any way differently from that of other Italian cheese styles,” the delegate said.

“In my assessment there is no cogent evidence of the Opponent or its members having educated the Australian public to expect that cheese bearing the name ‘Asiago’ come only from the Asiago Region. It follows that there is no relevant reputation in any of the Opponent’s marks such that use of the Trade Mark is likely to deceive or cause confusion,” Lyons said.

She also shot down the consortium’s argument that use of the mark would mislead consumers into believing the cheese originated from Italy or was of a certain quality, in violation of the Australian Consumer Law, and that the mark connotes that the cheese was produced in the Asiago region with the approval of the consortium.

“The goods are ‘Asiago-style cheese’ and that is the end of the matter,” the delegate said.

The delegate also shot down the opposition to the mark based on Section 61(1)(a) of the Trade Mark Act, under which a trade mark can be opposed if it’s a mark of geographical indication for a region in a country that’s different from the country where the goods were produced.

She noted that while companies established after the Trade Marks Act came into effect on 1 January 1996 could not use place names if the goods were not produced within that specific region, older firms were exempt.

Lyons found that Sartori had used the Asiago term since the 1950s and fell into this exemption despite never having used the term within Australia. This was not a condition of the exemption, she said, with the Trade Marks Act deliberately leaving out mention of use within Australia.

“[There] is no reason to suppose that the omission of the words ‘in Australia’ from the terms of s 61(2)(c) [of the Trade Mark Act] was inadvertent, or that it is necessary to read those words into the legislation in order to give effect to the purposes of the legislation. On the contrary, the better view is that Parliament consciously turned its mind to the application of the provision and deliberately chose not to confine the requisite use.”

The Consortium was represented by Lynne Lewis, a solicitor with Bird & Bird. Sartori was represented by Stephen Rebikoff of Douglas Menzies Chambers who was instructed by Davies Collision Cave.

The case is Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64.

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Miklos Bolza

Miklos Bolza has been a journalist for three years. He has written for a variety of publications, including NZ Lawyer, HRD Australia, and Australian Broker. He is currently the Sydney court reporter for Lawyerly.