Consorzio Del Formaggio Parmigiano Reggiano v Kraft Foods Group Brands LLC

[2022] ATMO 166

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Consorzio Del Formaggio Parmigiano Reggiano to registration of trade mark application number 1999987 (class 29) – KRAFT PARMESAN CHEESE - in the name of Kraft Foods Group Brands LLC

Delegate:

Tracey Berger

Representation:

Opponent: Luke Merrick of Counsel, instructed by Stephen Stern of Corrs Chambers Westgarth

Applicant: Stephen Rebikoff of Counsel, instructed by Anne Makrigiorgos of Griffith Hack

Decision:

2022 ATMO 166

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is an opposition by Consorzio Del Formaggio Parmigiano Reggiano (‘Opponent’) to the registration of the following mark in the name of Kraft Foods Group Brands LLC (‘Applicant’):

   Trade Mark:   KRAFT PARMESAN CHEESE (‘Trade Mark’)

   Filing Date:  1 April 2019 (‘Relevant Date’)

   Class:29

   Goods:Parmesan cheese

   Endorsement:                 Registration of this trade mark gives no exclusive right to use or           to authorise the use of the words PARMESAN CHEESE

2. As required by the Trade Marks Act 1995 (Cth)[1], the Application was examined, accepted for registration and subsequently advertised for opposition on 2 September 2019.  The Opponent filed a Notice of Intention to Oppose on 1 November 2019 and a Statement of Grounds and Particulars (‘SGP’) on 29  November 2019.  On 11 February 2020, the Applicant filed a Notice of Intention to Defend the opposition.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The parties then filed their evidence in accordance with the timetable set out in reg 5.14.  The Opponent filed evidence in support of the opposition (‘EIS’) on 31 July 2020, the Applicant filed evidence in answer on 3 February 2021 (‘EIA’) and the Opponent’s evidence in reply (‘EIR’) was lodged on 16 July 2021.

4. Following the conclusion of the evidence stages, both parties requested to be heard by videoconference and prior to the hearing also filed an outline of written submissions.  The matter was heard before me, as a delegate of the Registrar of Trade Marks, by videoconference on 23 August 2022.  The Opponent was represented by Luke Merrick of Counsel, instructed by Stephen Stern of Corrs Chambers Westgarth.  The Applicant was represented by Stephen Rebikoff of Counsel instructed by Anne Makrigiorgos of Griffith Hack.  I make my decision based on the particulars in the SGP, the evidence, written submissions of the parties and oral submissions made at the hearing.

   Grounds and Onus

5. The SGP nominates grounds of opposition under ss 42(b), 43 and 60.   The Opponent did not press the s 42(b) ground but this ground, and other grounds, are available on appeal.

6. The Opponent bears the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Evidence

7. The following evidence was filed:

   EIS

   ·     Declaration of Nicola Bertinelli, President of the Opponent, made on 15 July 2020 with Exhibits NB-1 to NB-3 (‘First Bertinelli Declaration’);

   ·     Declaration of Stephen Marcus Stern, Partner of the Opponent’s Attorneys, made on 8 July 2020 with Exhibits SMS-1 to SMS-3 (‘First Stern Declaration’);

   ·     Declaration of David Stanford Fougere, Managing Director of Phoenix Research Limited, made on 17 July 2020 with Annexures A-E (‘Fougere Declaration');

   ·     Declaration of Vincenzo Francesco Tomaino, restaurant owner and manager, made on 8 July 2020 with Exhibit VT-1 (‘Tomaino Declaration’);

   ·     Declaration of Mark Francis Miles Crowe, Managing Director of Brand Finance Australia (trading as Brand Dialogue), made on 14 July 2020 with Exhibits MC-1 to MC-22;

   ·    Declaration of William Adam Studd, cheese specialist, made on 10 July 2020 with Exhibit WS-1.

   EIA

   ·    

   Declaration of Michael Pretty, non-executive Chairman of Heinz Wattie’s Limited, made on 3 February 2021 with Annexures MP-1 to MP-17 (‘First Pretty Declaration’);

   
   
   

   ·    Supplemental Declaration of Michael Pretty made on 3 February 2021 with Confidential Annexure MP-1 (‘Second Pretty Declaration’);

   ·    Declaration of Anne Makrigiorgos, Principal of the Applicant’s attorneys, made on 1 February 2021 with Annexures AHM-1 to AHM-6 (‘Makrigiorgos Declaration’);

   ·    Declaration of Sabrina Hudson, Deputy General Counsel of The Kraft Heinz Company, made on 25 January 2021 with Annexures SH-1 to SH-7 (‘Hudson Declaration’);

   ·    Declaration of Philip John Gendall, Senior Research Fellow, Department of Public Health, University of Otago, made on 3 February 2021 with Exhibits PG-1 and PG-2;

   ·    Declaration of Terry Richardson, Chair of The Australian Dairy Industry Council, made on 3 February 2021 (‘Richardson Declaration’).

   EIR

   ·    Declaration of Anoushka Isabelle Tait, lawyer of the Opponent’s attorneys, made on 12 July 2021 with Exhibit AIT-1 (‘Tait Declaration’);

   ·    Declaration of Caterina Borsato, restaurant owner, made on 14 July 2021 with Exhibits CB-1 to CB-3;

   ·    Declaration of Dr David Hugh Blore Bednall, expert witness, made on 12 July 2021 with Annexures A and B;

   ·    Declaration of Maggie Beer, Australian cook, author and media personality, made on 12 July 2021 with Annexure A;

   ·    Declaration of Robert Mayer, Managing Director of F Mayer Imports Pty Ltd and Aria Foods Mayer Australia Pty Ltd, made on 8 July 2021;

   ·    Declaration of David Stanford Fougere made on 13 July 2021 with Exhibits DF-1 to DF-3;

   ·    Declaration of Nicola Bertinelli made on 6 July 2021 (‘Second Bertinelli Declaration’);

   ·    Declaration of Stephen Marcus Stern made on 13 July 2021 with Annexures A and B (‘Second Stern Declaration’);

   ·    Declaration of Will Adam Studd made on 13 July 2021 with Exhibits WS-1 and WS-2 (‘Second Studd Declaration’).

   Opponent’s Evidence

8. The Opponent’s evidence is intended to show that the term Parmesan is used in Australia and elsewhere to refer to Parmigiano Reggiano, that the terms Parmesan and Parmigiano Reggiano are used interchangeably to indicate Parmigiano Reggiano cheese and that the Opponent has a reputation in the term PARMESAN. 

9. The Opponent is a consortium of Parmigiano Reggiano cheese producers in Italy which represents the interests of the producers of Parmigiano Reggiano cheese.  Amongst various other activities, the Opponent defines the production policy of Parmigiano Reggiano (‘Defined Procedure’), authorises use of the Parmigiano Reggiano Product Designation of Origin mark and acts to protect the designation of origin of Parmigiano Reggiano and associated marks.  The Opponent owns 4 registered Australian certification trade marks and one standard registered mark consisting of or containing PARMIGIANNO REGGIANO.  The Opponent also holds various domain names including the domain name and website at

10. Ms Bertinelli attests to the history of Parmigiano Reggiano cheese dating back to the Middle Ages.  The first steps to protect the name Parmigiano Reggiano took place in the 1920s and in 1934, the Conzorzio Volontario Interprovinciale Grana Tipico (‘CGT’) was established (the predecessor of the Opponent).  In 1938, CGT adopted the name Parmigiano Reggiano and a certification mark for use on cheese from a defined region in Italy that met its quality standards.

11. The First Bertinelli Declaration also outlines the history of protection of PARMIGIANO REGGIANO as a geographical indication in Italy since the 1950s and some other European countries. 

12. The Opponent attests that ‘Parmesan’ is the literal translation of ‘Parmigiano’ which denotes Parmigiano Reggiano as evidenced by two French dictionaries.

13. The Opponent alleges that the terms Parmesan and Parmigiano Reggiano are used interchangeably in many countries including Australia. The First Stern Declaration attests to the results of searches of online databases for articles, including Australian newspaper articles, using the term Parmesan to refer to Parmigiano Reggiano dating back to the early 19^th century. 

14. Mr Studd, Mr Tomaino, Ms Borsato, and Ms Beer all declare that the term Parmesan has been used to refer to Parmigiano Reggiano by Australians for many years and that Parmigiano Reggiano is known to many consumers.  The Tait Declaration attests to online searches of the websites of various popular publications, blogs, recipe websites, food retailers and media which demonstrate that the term Parmigiano Reggiano and Parmesan are used interchangeably either in the recipes or articles.  Over 50 articles from before the Relevant Date are exhibited to the Tait Declaration by way of example.

15. The cheese Parmigiano Reggiano has been imported and sold in Australia in large volumes for decades.  The First Bertinelli Declaration provides details of the tonnes of Parmigiano Reggiano exported to Australia from 2002 to 2019 by a small number of members of the Opponent who responded to the request for this information.  Mr Mayer attests to his company’s long history of importing Parmigiano Reggiano, the approximate volume imported and trade channels through which it is sold.  He declares that there is a high level of recognition of Parmigiano Reggiano.

16. The Opponent is aware that the term Parmesan has been used in Australia for years to refer to cheese that is not Parmigiano Reggiano and the Opponent has undertaken various marketing activities to educate Australian consumers (including those working in the food and hospitality industries) that Parmesan should only be used to identify Parmigiano Reggiano.  The Opponent is a customer of Brand Dialogue Australia and Mr Crowe attests to the marketing work undertaken by his company to promote that “the real or true and only Parmesan is Parmigiano Reggiano”.  This marketing includes promotions at various food festivals and events where Parmesan and Parmigiano Reggiano were used interchangeably and Parmigiano Reggiano was promoted as “The Only Parmesan”.

17. Mr Fougere is an expert witness who provides an opinion on the results of an online survey, conducted by Ipsos (‘Ipsos Survey’), a reputable market research firm in Australia.  Amongst other things, Mr Fougere attests that of 1006 people surveyed, 242 people thought that Parmesan cheese is made in Italy, which does not include people who thought Parmesan cheese was probably made in Italy, or was originally made in Italy, or is now made in Italy as well as other locations.  Only 19 people surveyed believed that Parmesan cheese is made in Australia.  One of Mr Fougere’s conclusions is that almost 25% of adult Australians think that Parmesan cheese is made in Italy and nowhere else. 

18. Dr Bednall is an expert witness who was asked to review the opinion of the Applicant’s expert witness, Dr Gendall, and his evaluation of the Ipsos Survey provided in the Fougere Declaration.  Dr Bednall disagrees with Dr Gendall’s assessment of the appropriate demographic to survey as it does not account for ‘indirect buyers’ of Parmesan cheese (being those who consume Parmesan in restaurants, take-away food or otherwise) and for various reasons, disagrees with the other criticisms Dr Gendall had of the Ipsos Survey.  Dr Gendall declares that the Ipsos Survey does demonstrate that Australian consumers have an understanding of the nature of Parmesan cheese and where it is made. 

19. Most of the EIR criticises the EIA for different reasons.  The Second Bertinelli Declaration disputes Mr Richardson’s allegation that Parmesan is a common, generic term in international use as evidenced by the Opponent’s registration for PARMESAN in Italy since 1966 and international registrations in over 20 other countries.[4]  The Second Stern Declaration notes that a number of pages of the Makrigiorgos Declaration do not refer to Parmesan, show Parmesan as a descriptor for Parmigiano Reggiano or have other deficiencies.  Mr Stern also criticises the First Pretty Declaration as the vast majority of the 288 cheese products (rather than other food products containing cheese) are manufactured by only three manufacturers namely Kraft LLC, Fonterra Brands (Australia) Pty Ltd or Saputo Dairy Australia Pty Ltd (or a related entity).  Of the 288 cheeses referred to in the First Pretty Declaration, five are Parmigiano Reggiano cheeses which are described as Parmesan.  The Second Studd Declaration is also critical of the Makrigiorgos and First Pretty Declarations on the basis that they do not account for cheese sales channels other than the major supermarket chains.

    [4] Second Bertinelli Declaration, [7].

    Applicant’s Evidence

20. The EIA is intended to show that 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.  Further, the origin of Parmesan cheese is generally shown on the packaging.

21. The Applicant, Heinz Wattie’s Limited and H.J. Heinz Company Pty Ltd (‘Heinz Australia’) are all wholly owned subsidiaries of The Kraft Heinz Company, the fifth largest food and beverage company in the world.  

22. The Hudson Declaration outlines the history of the Applicant (and its predecessors) of selling Parmesan cheese which commenced in the USA in 1945 and by 1966, had expanded to Australia.  Ms Hudson attests that Parmesan is a generic term in Australia (as well as various other countries) and exhibits dictionary definitions of Parmesan in support of this contention. 

23. Mr Pretty attests that he is aware of a number of Australian and New Zealand manufacturers of parmesan cheese and he provides evidence of at least 16 different manufacturers of parmesan cheese in Australia.  In Australia, Heinz Australia’s parmesan cheese is sold under the brand KRAFT.   In contrast, Mr Pretty declares that Parmigiano Reggiano is sold under this name (not Parmesan) and that the packaging generally indicates that the product is from Italy.  Mr Richardson also declares that Parmesan cheese is manufactured in Australia by at least 24 different traders (operating businesses from small to large) and sold under a number of brands.

24. In addition, Mr Pretty attests that many ready-made meals, sauces and food products are sold in Australia which list Parmesan as an ingredient or flavour.  Examples of a selection of these products are provided.

25. The First Pretty Declaration also exhibits four reports that Heinz Australia obtained from Mintel, a market intelligence and research organisation, on products available in Australia for sale being (i) Parmesan cheese in the hard cheese and semi-hard cheese sub-category of the dairy category, (ii) Kraft Parmesan cheese in the cheese category of the dairy category, (iii) Parmesan as an ingredient in cheese products, and (iv) Parmesan as an ingredient in all products other than cheese.  Based on these reports and his own knowledge, Mr Pretty concludes that the term Parmesan is in common use as a generic descriptor for a style of hard cheese that does not identify source or origin.  In the Richardson Declaration, Mr Richardson concurs with this conclusion and declares that the Australian Dairy Industry Council regards Parmesan as a generic term in Australia indicating a particular style of hard cheese.

26. The Second Pretty Declaration declares that Heinz Australia obtained two reports from Information Resources Inc, a global measurement and data analytics company, for Total Cheese and Branded Parmesan segment sales in Australia from 1 April 2018 – 1 April 2019 and 1 April 2019 - 1 April 2020.  These reports showed that sales of Parmesan cheese (of any origin) made up 4.9% of total Australian cheese sales in 2018-19 and 4.7% in 2019-20.

27. Dr Gendall is an expert witness who has reviewed and commented on the Ipsos Survey and Mr Fougere’s opinion on that survey.  Dr Gendall attests that the Ipsos Survey should have been conducted amongst a broader target audience.  Dr Gendall considers that the Ipsos Survey should not have been conducted amongst all Australian adults but should have been limited to specialty cheese buyers and potential buyers with an awareness of Parmesan.  Dr Gendall also criticises the Ipsos Survey for asking those surveyed about Parmesan and not the Trade Mark.  This question would not have resulted in 24% of respondents thinking that Parmesan comes from Italy.  He also attests that Parmesan cheese is bought by only a minority of Australian consumers and based on the Second Pretty Declaration, he declares that of the comparatively low value of Parmesan cheese sales in Australia, sales of Italian Parmesan were a very small fraction of 1.2% in 2018-19 and 1.1% in 2019-20. 

28. Ms Makrigiorgos attaches the results of searches in Australia and New Zealand for registrations which contain parmesan in the specification of goods and registrations containing PARMESAN in the mark.  The Markrigiorgos Declaration also annexes the results of an online database search for articles containing the words or phrase ‘Kraft Parmesan’[5] and phrase Australian Parmesan[6] which collectively returned about 250 articles.  Finally, Ms Makrigiorgos attests to visiting various supermarkets and the array of Parmesan and Parmigiano Reggiano cheeses, and food products containing Parmesan, for sale.

    Discussion

    [5] Some of these articles and advertisements date back to the 1960s.

    [6] The earliest references are from the 1930s.

    Section 43

29. Section 43 provides:

    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.

30. A ‘connotation’, in the context of section 43, is a secondary meaning implied by the trade mark.[7]

    [7] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

31. Determining whether the s 43 ground has been made out involves two stages.  First, the Opponent must demonstrate that there is a connotation in the Trade Mark, or a part of it.  If a connotation is found, then the Opponent must establish that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.  As Kenny J stated in McCorquodale v Masterson: 

    In order for s 43 to apply, the court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations.[8]

    [8] McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582, 589 (Kenny J).

32. In the SGP, the Opponent contends that in Australia, Parmigiano Reggiano refers exclusively to, and is distinctive of a cheese produced in a delimited geographical region in Italy and in accordance with the Defined Procedure.  Many Australian consumers know that Parmesan means Parmigiano Reggiano, or is a specific cheese from Italy, or comes from Italy.  As Parmesan is an important and prominent feature of the Trade Mark, use of the Trade Mark for cheese would:

    a.have a connotation for many Australian consumers as indicating that:
    (i) the cheese is Parmigiano Reggiano; and/or
    (ii) is a specific cheese from Italy; and/or
    (iii) comes from Italy; and

    b.be likely to deceive or cause confusion amongst such consumers when used in connection with cheese not produced in the geographical region and in accordance with the Defined Procedure.

33. In oral submissions, the Opponent argued that there is a significant cohort of Australian consumers who will be confused by the Trade Mark due to the connotation of the element PARMESAN.  The Opponent submits that this is sufficient to satisfy the ground of objection under s 43 even if there is a substantial number of other consumers who will not think that cheese offered under the Trade Mark is Parmigiano Reggiano, originates from Italy or is otherwise associated with Italy.

1. It is apparent from the Opponent’s evidence, and is not in contention, that Parmigiano Reggiano cheese has been imported and sold in Australia in significant quantities for decades through a variety of trade channels from specialty cheese stores to supermarket chains and various other retailers of different sizes and nature in between. 

2. The Opponent has sought to show that the term Parmesan is frequently used to refer to Parmigiano Reggiano.  Whilst the terms Parmigiano Reggiano and Parmesan are sometimes used interchangeably, such uses often suggest that Parmigiano Reggiano is a type of Parmesan.  For example, in the Tomaino Declaration,[9] whilst Mr Tomaino names the available cheese as ‘Parmigiano Reggiano’, the description is ‘aged Parmesan cheese made with cows milk. Bitey, salty, crusty, rich, creamy'.  To many consumers, this would indicate that Parmigiano Reggiano is a type of Parmesan but not necessarily that Parmesan is only Parmigiano Reggiano. Similarly, when customers are in an Italian restaurant such as those of Mr Tomaino or Ms Borsato, and ask for Parmesan they may well expect to receive Parmigiano Reggiano because of the nature of the restaurant but I do not believe that this is necessarily the case or indicates that they expect to receive Parmigiano Reggiano in restaurants offering a different cuisine. 

   [9] Exhibit VT-1.

3. I am not persuaded that the various recipes relied on by the Opponent to show that the terms Parmesan and Parmigiano Reggiano are used interchangeably only to refer to Parmigiano Reggiano.  In my view, many of the examples instead suggest that Parmigiano Reggiano is one example of Parmesan cheese.  For example, where the ingredients include ‘parmigiano reggiano parmesan cheese’ or ‘reggiano parmesan’, this indicates that Parmigiano Reggiano is a type of parmesan, perhaps the preferred version to use, but consumers could substitute a different parmesan cheese.  Another recipe states ‘Be sure to use top-quality parmesan; at Monster we use 24-month-old Parmigiano-Reggiano’ which again suggests to me that another parmesan cheese could equally be used.[10]  Similarly, the Masterchef recipes in the Second Studd Declaration illustrate Parmesan used as a description or flavour in the name of the dish and then refer to Parmigiano Reggiano in the ingredients.  This type of use suggests that Parmigiano Reggiano is a type of Parmesan but not necessarily the only one.  Based on many of the uses of Parmesan in the evidence, I believe that consumers would understand that Parmigiano Reggiano is a Parmesan cheese but that there are other Parmesan cheeses. 

   [10] Tait Declaration, Exhibit AIT-1.

4. The Second Stern Declaration is critical of the evidentiary value of some of the EIA on the basis that it shows use of Parmesan as a descriptor.  I consider the EIA is highly relevant in that it shows the term Parmesan again being used to indicate that Parmigiano Reggiano is a type of Parmesan, style of cheese or cheese flavour.

5. The Opponent acknowledges that there is a long history in Australia of Parmesan being used to indicate a style of cheese, regardless of its origin.  The Applicant points out that this is the meaning contained in Australian dictionaries[11] including the Macquarie Dictionary.[12]  Further, Parmesan cheese has been produced locally and internationally for sale in Australia for over 40 years[13] including cheese bearing the Trade Mark.[14]  Accordingly, the relevant question is will Australian consumers seeing the Trade Mark consider that Parmesan in that mark contains a connotation that the cheese being sold is Parmigiano Reggiano, originates from Italy or is associated with Italy and as a result of that connotation will be deceived or confused by the origin of cheese sold under the Trade Mark.  

   [11] Hudson Declaration, [11].

   [12] Ibid Annexure SH-6.

   [13] Richardson Declaration, [8]-[9].

   [14] Ibid [8].

6. The Opponent refers me to the decision in Scotch Whisky Association v De Witt,[15] where Sundberg J discussed the two different classes of consumers of scotch whisky and bourbon being the ‘involved’ and ‘uninvolved’[16] and how these two classes of consumer would purchase bourbon and scotch whisky products. The Opponent submits that this case is authority for the proposition that it is necessary to consider more than one class of consumer where the class constitutes a significant number of consumers.  I accept this proposition and agree that there are numerous retailers of cheese, restauranteurs, customers of high end restaurants and other Australian consumers of cheese (being ‘informed’ consumers) who understand Parmesan to be the anglicised version of Parmigiano Reggiano and would use the term Parmesan to refer to Parmigiano Reggiano.  Nevertheless, whilst ‘informed’ consumers may themselves use the terms Parmesan and Parmigiano Reggiano to refer to the same cheese, I expect that they are also aware that in Australia, Parmesan does not always indicate Parmigiano Reggiano and is often used to describe a style of cheese or flavour.  In my view, those ‘informed’ consumers are likely to appreciate that the use of Parmesan is widespread in Australia to indicate cheese that is not Parmigiano Reggiano and would take care when purchasing cheese marked as Parmesan if they are seeking to buy Parmigiano Reggiano.  When faced with cheese bearing the Trade Mark, I consider that these consumers would be sceptical that the cheese is Italian or Parmigiano Reggiano and are highly unlikely to be deceived or confused into thinking that the Applicant’s cheese is Parmigiano Reggiano, or is from, or associated with, Italy.  It is telling that none of the Opponent’s declarants have stated in their evidence that if they saw cheese bearing the Trade Mark that they would think it was Parmigiano Reggiano, from Italy or associated with Italy.

   [15] [2007] FCA 1649.

   [16] Ibid [33].

7. As the Applicant notes Australian consumers have been able to purchase numerous brands of parmesan cheese not produced in Italy for many years and as demonstrated in the EIA, the term Parmesan is commonly used in other food products to describe a flavour and/or ingredient.[17]  The Opponent argues that the Applicant has demonstrated that only a handful of brands use the term Parmesan to indicate cheese that is not Parmigiano Reggiano and that there is no historical evidence of this practice. I disagree.  In my view, there are numerous examples in the EIA that show use of Parmesan for cheese from Australia or other places, as an ingredient or a flavour.  For example, Exhibits MP-15 and MP-16 of the First Pretty Declaration show various products (including those of the Applicant) containing or consisting of Parmesan available for sale in Australia for some years.  The Richardson and First Pretty Declarations both attest to various local manufacturers of Parmesan cheese.  The common use of the term Parmesan to indicate a style of cheese or flavour dispels any likelihood of deception or confusing arising from use of the Trade Mark.

   [17] First Pretty Declaration, [19]-[21].

8. I am satisfied that Australian consumers of cheese, whether ‘informed’ or ‘uninformed’, understand that Parmesan has more than one signification.  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.   

9. I am not satisfied that the Trade Mark contains a connotation that is likely to deceive or cause confusion.  Hence the s 43 ground is unsuccessful.

   Section 60

10. Section 60 provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

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

    (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
    
    

11. For the s 60 ground of opposition to be established, the Opponent must:

    i.demonstrate that another trade mark had acquired a reputation in Australia before the Relevant Date; and

    ii.that because of the reputation of that trade mark, use of the Trade Mark would cause deception or confusion.

12. In the context of s 60, reputation refers to ‘recognition of [the mark] by the public generally’.[18]   Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[19] 

    [18] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

    [19] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

13. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[20]

    [20] [2019] FCA 923, [83] (O’Bryan J).

14. The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.  In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

15. The Opponent alleges in the SGP that it (and the cheese producers it represents) has common law trade mark rights and a substantial reputation in Parmesan being the name commonly used in Australia to refer to Parmigiano Reggiano and as the English word for Parmigiano.  As a result, the Opponent alleges that use of the Trade Mark is likely to deceive or confuse when used for cheese that is not Parmigiano Reggiano because consumers would understand the cheese to be Parmigiano Reggiano, a specific cheese from Italy or a cheese from Italy.

16. The Opponent contends that both Parmigiano Reggiano and Parmesan have a very extensive reputation in Australia, that the terms are used interchangeably and hence use of the Trade Mark would cause a ‘relevant cohort’ of consumers to believe the product bearing the Trade Mark is Parmigiano Reggiano or connected with it in some way.

17. The Applicant argues that there are two problems with the Opponent’s position.  Firstly, even if it is accepted that Parmigiano Reggiano has a reputation in Australia, it has not been proven that the ordinary and reasonable consumer of Parmesan cheese believes that in Australia Parmesan is only used on or in relation to Parmigiano Reggiano.  As a result, there is no likelihood of deception of confusion.  Secondly, it has not been demonstrated that Parmesan has a reputation as a trade mark but is instead a descriptive term indicating a style of cheese.

18. As discussed above under the s 43 ground, I am not satisfied that the Opponent’s evidence demonstrates that a substantial number of consumers believe that Parmesan only indicates Parmigiano Reggiano in this country.  The ‘informed’ purchaser of cheese who understands that Parmesan is a translation of Parmigiano and uses the terms Parmigiano Reggiano and Parmesan interchangeably, also understands that Parmesan is used in Australia more generally to indicate a style of cheese which is not necessarily from Italy, or even a particular cheese flavour.  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. 

19. Although the Opponent has taken some steps to try and educate consumers that Parmesan is only Parmigiano Reggiano, I do not believe that this marketing has been sufficient to dispel the understanding of most Australian consumers of cheese that Parmesan is a style of cheese or cheese flavour.  I consider that much of the Opponent’s marketing has been directed to those consumers falling closer to the ‘informed’ class than the ‘uninformed’ who are more likely to attend the Opponent’s stalls at the Italian Food and Wine Festivals (or similar festivals) or events held at fine dining restaurants such as Marque.

20. As already indicated in this decision, I believe the commonly understood meaning of Parmesan in Australia is a style of cheese produced in a number of different countries which does not distinguish the goods of any particular trader.

21. The Opponent has not established a reputation in Australia in Parmesan and therefore, the s 60 ground is not successful.

    Decision

22. I find that the Opponent has failed to establish a ground of opposition.  Accordingly, registration of the Trade Mark under application number 1999987 may proceed not less than one month from the date of this decision.

23. If the Registrar is served with a notice of appeal, I direct that registration of the Trade Mark shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

24. Both parties requested an award of costs. I see no reason to depart from the general rule that costs follow the event. I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

    Tracey Berger

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    23 September 2022