US Court of Appeals rules ’gruyère’ as generic in a battle between Swiss, French and US cheesemakers

US Court of Appeals rules ’gruyère’ as generic in a battle between Swiss, French and US cheesemakers

Affirms the decision of the District Court for the Eastern District of Virginia

The United States Court of Appeals for the Fourth Circuit has stood unconvinced with the French and Swiss consortiums that maintained only cheese made in the Gruyère region of France and Switzerland could be labelled gruyère cheese.

In the US Dairy Export Council Atalanta Corporation, and Intercibus Inc v. Interprofession du Gruyère and Syndicat Interprofessionel du Gruyère case, the US court granted summary judgment to dairy industry representative organization US Dairy Export Council (USDEC) and food importers Atalanta Corporation, and Intercibus Inc in their opposition to registering gruyère as a certification mark.

The Swiss and French consortiums Interprofession du Gruyère and Syndicat Interprofessionel du Gruyère had applied for the certification.

The judgment stated, “Like a fine cheese, this case has matured and is ripe for our review. For the reasons to follow, we conclude that the term ‘gruyere’ is generic as a matter of law, and affirm the decision of the district court.”

Gruyère cheese has a protected designation of origin (PDO) and protected geographical indication (PGI) in the EU.

The court noted that PDO and PGI designations for gruyère requirements dictated that the process of production include the cheese being produced in specified areas of Switzerland and France. However, in the US parallel protections do not exist.

In 2015, Interprofession du Gruyère filed an application to register the term ‘gruyère’ as a certification mark at the US Patent and Trademark Office (USPTO). It was to certify that the cheese originated from the Gruyère region of Switzerland and France.

However, the USDEC filed an opposition to the mark. It argued that US customers would understand the term ‘gruyère’ to denote a type of cheese that could be produced anywhere.

The USPTO’s Trademark Trial and Appeal Board (TTAB) also agreed to it. It ruled in 2020 that the term ‘gruyère’ was too generic to function as a trademark for cheese. It said the purchasers and consumers of cheese understood ‘gruyère’ as a designation that primarily referred to a category of cheese that could come from anywhere.

Thereafter, the Swiss and French consortiums went to the District Court for the Eastern District of Virginia which agreed with the TTAB. It ruled that gruyère’ had become generic through genericide and was no longer eligible to be registered as a certification mark.

The appeal court judgment stated that the Food and Drug Administration had issued a standard of identity for gruyère cheese.

It ruled, “Those requirements are far less stringent than those governing gruyère production in Switzerland and France. For example, and as specifically relevant to this appeal, the FDA standard of identity does not impose any geographic restrictions as to where the gruyère-labelled cheese can be produced.”

Meanwhile, Krysta Harden, the President and CEO of the US Dairy Export Council commented, “This is an outstanding result for manufacturers and farmers in the US. We are grateful that the appeals court agreed that nobody owns the exclusive right to use generic terms. This sets a terrific precedent for the right to use common food names in the US. We need other countries to likewise stand up for what is right and defend that use just as strongly.”

The Swiss and French consortiums were represented by Richard Zachary Lehv and Daniel M. Nuzzaci from Fross Zelnick Lehrman & Zissu and Carl E. Jennison and John N. Jennison from Jennison & Shultz.

(While Fross Zelnick & Zissu is known for its involvement in high-profile trademark disputes involving household names such as Lego and Peloton, Virginia-based Jennison & Shultz focuses on copyright and trademark laws).

The US Dairy Export Council Atalanta Corporation and Intercibus Inc were guided by Nicole A. Saharsky from Mayer Brown.

Brian G. Gilpin, Zachary R. Willenbrink and Jennifer L. Gregor from Godfrey & Kahn, also appeared for them. With its head office in Wisconsin and offices in Washington DC, the law firm has a robust IP practice.