US Dairy Export Council v Consorzio per La Tutela Del Formaggio Asiago
[2020] ATMO 45
•25 March 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by US Dairy Export Council to registration of trade mark application number 1807862 (class 29) - ASIAGO - in the name of Consorzio per la Tutela del Formaggio Asiago
Delegate: | M. Cooper |
Representation: | Opponent: Stephen Rebikoff of Counsel instructed Davies Collison Cave Applicant: Lynne Lewis and Sariqa Mestroni of Bird & Bird |
Decision: | 2019 ATMO 45 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 177 considered – ground established – registration refused. |
Background
This matter concerns an opposition by the US Dairy Export Council (‘the Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the certification trade mark detailed below in the name of Consorzio per la Tutela del Formaggio Asiago (‘the Applicant’):
Application Number: 1807862
Trade Mark: ASIAGO (‘the Trade Mark’)
Filing Date: 8 November 2016
Specification of Goods:
Class 29: Cheese (‘the Goods’)
Endorsement: Provisions of paragraph 177(2)(b) applied.
The Trade Mark was examined and advertised as accepted for possible registration on 10 May 2018 in the Australian Official Journal of Trade Marks.
On 9 July 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 31 July 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 177, 42(b), 44, 58 and 59 of the Act.
On 25 October 2018 the Applicant filed a Notice of Intention to Defend.
Evidence
Evidence in Support (‘EIS’) of the opposition was filed by the Opponent on 30 January 2019. It comprised the declaration of
Shawna Morris, Senior Director of the Consortium for Common Food Names and the Opponent’s Vice President of Trade Policy made on 29 January 2019 with exhibits SM-1 to SM-9 (‘Morris declaration’)
Evidence in Answer (‘EIA’) was filed by the Applicant on 12 May 2019 and comprised the declarations of
Fiorenzo Rigoni, the Applicant’s President, dated 10 May 2019 with exhibits FR-1 to FR-17 (Rigoni Declaration);
Pietro Bonato, the Applicant’s CEO, dated 10 May 2019 (Bonato Declaration);
Fausto Amato, Purchasing and Import Manager of Quality Centre Food Services P/L dated 11 May 2019 with exhibits FA-1 to FA-3 (Amato Declaration);
Sogna Ocello, co-founder and co-owner of Formaggio Ocello, dated 10 May 2019 with exhibits SO-1 to SO-5 (Ocello Declaration);
Jotishna Kumar, paralegal employed by Applicant’s attorney, dated 10 May 2019 with exhibits JK-1 to JK-3 (Kumar Declaration);
Matthew Steele, cheese monger and director of Cornelius Cheese mongers P/L, dated 12 May 2019 with exhibits MS-1 to MS-2 (Steele Declaration).
Evidence in Reply (‘EIR’) was filed by the Opponent on 15 July 2019 comprising the declaration of Lauren Eade dated 12 July 2019 with exhibits LE-1 to LE-9 (Eade Declaration).
On 15 August 2019, the Applicant requested a hearing and the matter proceeded before me, a delegate of the Registrar, in Canberra on 5 December 2019.
Lynne Lewis and Sariqa Mestroni of Bird & Bird appeared for the Applicant. The Opponent was represented by Stephen Rebikoff of counsel instructed by Ian Drew and Lauren Eade of Davies Collison Cave.
Evidence in Support
In her declaration, Shawna Morris states that ‘asiago’ describes a particular style of cheese and includes evidence of its use and production in the US since the 1950s. Attached exhibits demonstrate that at least 30 US manufacturers produce an ‘asiago’ cheese. She furthers states her belief that the word has lost its geographical significance and it does not distinguish cheese goods certified by the Applicant from those of other traders or distinguish or otherwise identify cheese from a particular regional origin.
Evidence in Answer
In his declaration, Matthew Steele, a Melbourne cheesemonger, states his belief that, based on his knowledge and experience in the industry, when Australian consumers who are familiar with ASIAGO cheese or have come across it before see a label with the trade mark ASIAGO, they identify that cheese as originating from Italy.
The Bonato declaration provides statistics for the Applicant’s inspections and quality control activities for 2013 to 2018. He states his belief that PDO status as possessed by the Applicant’s cheese is recognised as synonymous with high quality.
Sogna Ocello, a NSW retailer of specialty European cheese, attaches printouts from her website showing, among other things, the promotion and sale of Asiago cheese. She states her belief that consumers who see the mark ‘ASIAGO’ on cheese identify that cheese as originating from Italy and of being a particular type of cheese.
In his declaration, Fausto Amato states that he imports cheese from Italy to Australia and distributes to numerous Australian stores and Sydney restaurants. He claims that he avoids products which are not certified because certification is an indicator of quality and authenticity. He says his business has been importing Asiago cheese, certified by the Applicant, since 2006. He exhibits his website showing wheels of Asiago cheese imported by his business before the filing date. He notes that when the cheese is sliced the mark ASIAGO appears on the side of the cheese. Based on his experience, he asserts that he is ‘aware that the vast majority of people in the industries with whom I deal recognise the mark ‘ASIAGO’ and understand the significance of that mark, namely that it refers to authentic Asiago cheese that originates from the Asiago region in Italy. Having regard to the above, I believe that Australian consumers would, upon seeing the mark ASIAGO on cheese, understand that the cheese originated from Italy.’[1]
[1] Amato declaration, paragraphs 14-15.
The Kumar declaration exhibits the results of various Google searches conducted by reference to claims in the Morris declaration. He states that they fail to confirm that any of the companies referred to in the Morris declaration as producing cheese sold under the Asiago name, sell or promote Asiago cheese in Australia. None of them allowed him to purchase the cheese for import to Australia.
The Rigoni declaration outlines the history of Asiago region in Italy and the development of Asiago cheese, its recognition as a GI in several countries, its Appellation of Origin and Protected Designation of Origin status in the European Union and how production is protected and controlled. He describes its usage and distribution worldwide, stating that in the period 2011 to 2018 over 170 million kilograms of ASIAGO cheese from the Asiago Region was sold worldwide, grossing over €840 million in revenue. In that same period, he claims over 1,015,000 kilograms of ASIAGO-labelled cheese from the Asiago region was sold in Australia, grossing over €7.3 million in revenue. Referring to the Morris declaration, he observed that many of its claims reflect the US position and are not relevant to Australia. Noting the FOI documents relating to the Applicant’s (unsuccessful) opposition to the registration of SARTORI ASIAGO in Australia[2] he observed that there is no evidence of the sale of ‘Asiago-style’ cheese under or by reference to this trade mark in Australia. He attributes this to the recognition in the Australian market of genuine ASIAGO cheese. He maintained that it is in the interests of the Australian consumers that the application proceeds to registration so that consumers can be properly informed about the differences between ‘Asiago-style’ cheese (which is inspired by genuine ASIAGO cheese) and the genuine, high quality product originating from Italy.
[2] Australian Registered trade mark no 1680928.
Evidence in Reply
The Opponent is described in the Eade declaration as ‘an independent, international; non-profit alliance whose goal is to work with leaders in agriculture, trade and intellectual property rights to foster the adoption of high standards and model geographic indication guidelines throughout the world. CCFN safeguards the use of common names around the world and ensures they are not monopolised, in order to benefit both consumers and international trade.’[3]
[3] Eade declaration, paragraph 23.
The Eade declaration also refers to The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the obligations of member parties (including Australia) in relation to the protection of geographical indications (GIs). She notes that TRIPS Article 22 does not mandate recognition of EU PDOs for food products such as cheese in Australian law and that TRIPS Article 23 protection is specific only to wines and spirits. She further notes that the protection of GIs in Australia for products other than wines and fortified wines remains a matter under negotiation between the EU and Australia. She also observes that the Notes to the Applicant’s Rules[4] indicate ‘[t]he certification regime proposed by the Applicant relates to the certification of a product under the description ‘asiago’ with the trade marks used to distinguish that product being [the Asiago logo marks], and the branding controls in the Certification Rules being directed to those marks’. She notes those marks are not the subject of the Application.
[4] Consortium for the Protection of Asiago Cheese. Regulations on the use of the trademark “ASIAGO” (‘the Rules’) as approved by the ACCC at exhibit SM-1 to the Morris declaration.
For ease of reference the table below lists the Applicant’s other registered Australian trade marks (‘the Asiago logo marks’):
| Trade mark | Goods | Trade Mark number | Priority date | Type of mark |
| Dairy products; cheese (29) | 1523300 | 15 Jun 2012 | Standard | |
| Cheeses (29) | 1647738 | 6 May 2014 | Certification |
Grounds and Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[5] In its SGP the Opponent claimed grounds under sections 177, 42(b), 44, 58 and 59 of the Act. At the hearing it confirmed that it pressed only the s 42(b), s 59 and s 177 grounds. The relevant date at which the grounds must be considered is the filing date of the opposed application.[6] In this case that date is 8 November 2016 (‘the relevant date’).
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Giles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].
Consideration and reasons
Part 16 of the Act provides for certification trade marks which, as defined in s 169 of the Act, are signs used or intended to be used to distinguish goods or services ‘dealt with or provided in the course of trade; and certified by a person….in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture’ from other goods, or services dealt with or provided in the course of trade but not so certified.
As Shanahan describes it, ‘a certification trade mark is therefore intended to indicate that the goods or services in relation to which it is used possess a particular, objectively verifiable characteristic’.[7]
[7] Shanahan’s Australian Law of Trade Marks and Passing Off (6th Ed, Online) (‘Shanahan’) [55.05].
The Opponent submitted that, unlike other trade marks, there is no presumption of registrability for a certification trade mark (‘CTM’). The Applicant disagreed, comparing s 176(1) of the Act with s 33(1) of the Act, both of which provide that the Registrar must accept the application if certain similar conditions are met. It contended that the Opponent had conflated the Shanahan comments insofar as it only states the operation of s 176 ‘appears to be different’ from s 33. The Applicant submitted that the application has been made in accordance with the Act, it has been examined by IP Australia which has determined that there are no grounds for rejecting it and the ACCC has given the relevant certificate. Therefore, the presumption is that the Registrar must accept it.
There is some force in the Applicant’s argument however the words of 176 reflect the wording of the 1955 Act in this regard which, the authorities confirm, required an applicant to satisfy the Registrar that there were no grounds to object to registration[8].
[8] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [15].
In Kenman Kandy[9], French J stated:
Since the enactment of the 1995 Act the onus is no longer on the applicant to establish registrability as it was under the 1955 Act: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 at 372–3 ...
[9] [2002] FCAFC 273; 122 FCR 494 [22]
I note also that s 33 is specifically expressed not to apply to certification trade marks (s 170). For the above reasons, I consider that the presumption of registrability does not apply.
Section 177
Section 177 of the Act provides as follows:
Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services.
(1) In addition to any other ground on which:
(a) an application for the registration of a certification trade mark may be rejected; or
(b) the registration of a certification trade mark may be opposed;
the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.
Note 1: For applicant see section 6.
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: Division 2 of Part 4 sets out the main grounds for rejecting an application, but s 41 does not apply to certification trade marks (see section 170)
(2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:
(a) the extent to which the certification trade mark is inherently adapted to distinguish those goods and services; or
(b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods and services.
Therefore, in determining whether a CTM is capable of distinguishing goods or services certified by an applicant or an approved certifier from goods or services not so certified, I must take into account the extent to which the Trade Mark ‘either inherently or through use or other circumstances, is capable of operating to inform the consuming public that the goods to which the mark is applied have been certified’[10].
[10] Consorzio Per La Tutela Del Formaggio Gorgonzola v US Dairy Export Council [2020] ATMO 44
The Opponent’s SGP stated in this respect as follows:
The Trade Mark is not capable of distinguishing the goods in respect of which registration of the Trade Mark is sought by the Applicant which are certified by the Applicant or an approved certifier from goods not so certified, and registration should be rejected under Section 177 of the Act.
The ordinary signification of the word ‘asiago’ in Australia to the persons concerned with the goods to which the proposed trade mark is to be applied (including traders in cheese and consumers of cheese) is a style of cheese, regardless of specific geographical origin. Other traders in the goods of the application have a legitimate desire to use the word ‘asiago’ in Australia to describe their own cheese products. The descriptive significance of ‘asiago’ is implicitly recognised in the certification rules filed in relation to the Application (the Rules) and the attachments to the Rules, which
a) include in Attachment 1 of the Rules the following marks and
as well as the word ‘asiago’;
b) identify in Attachment 2 the ‘Asiago logo’ as ‘the basic component of the identity system of the trademark,’ and require certified individuals to use the Asiago logo on 50% of the printable surface of the packaging of the certified goods;
c) include in the annexed Convention (page 34 of the Rules) under the heading ‘1. MARKING/LOGO OF ASIAGO CHEESE’ the following text:
The Consortium…is holder of the collective trademark/marking shown here above and of the designation ASIAGO...’ (emphasis added).
The Applicant has not filed any evidence of its use of the Trade Mark to establish that the certification trade mark is capable of distinguishing goods certified by the Applicant or an approved certifier from those of other traders.
Opponent’s submissions
The Opponent accepted it bore the onus to establish the grounds of opposition and that the relevant date for assessment is the filing date of the application.
Noting the analysis outlined in Brillient Investment Publishing Pty Ltd [11], the Opponent submitted that the Trade Mark should possess a ‘certification characteristic’ and a ‘distinguishing characteristic’, neither of which, it claimed, the Trade Mark demonstrated. It contended that the certification characteristic should make it apparent that the sign is ‘being used to indicate that the goods or services in question have been certified in some way’ including for example the use of words such as ‘approved’ or accredited’. While acknowledging that there is no such specific requirement under the Act, the Opponent maintained that unless there is some express indication that the mark is operating as a CTM it ‘will not be capable of functioning as a certification trade mark unless the public have been educated to regard the mark in that way.’ It submitted that there is nothing about the Trade Mark that denotes the Goods have been certified by or on behalf of the Applicant.
[11] [2019] ATMO 127.
Specifically, the Opponent submitted that ASIAGO was not to any extent inherently adapted to distinguish cheese certified by or on behalf of the Applicant from cheese that is not so certified. Its ordinary signification is a geographical location and a type of cheese from that location. It is therefore, the Opponent contended, directly descriptive of the Goods and it is a word other traders acting honestly would want to use to describe their own cheese with the same characteristics. It noted that there are no restrictions on ASIAGO’s use outside the EU and the evidence established that many producers outside the EU do honestly and legitimately use it. It submitted that the circumstances were the same as those in the PERSIAN FETTA case[12] and the same conclusion should apply. That is, that PERSIAN FETTA is a style of cheese from a particular geographical region and honest traders might legitimately wish to use the phrase to describe their own goods. It was not to any extent inherently adapted to distinguish cheese products.
[12] Yarra Valley Dairy Pty. Ltd v Lemnos Foods Pty Ltd (2010) 90 IPR 117.
In relation to whether it had become adapted to distinguish, the Opponent contended that there is no evidence that members of the Australian public have been educated to view the Trade Mark as indicator of certification. While the Applicant’s evidence shows owners of specialty cheese stores believe customers identify Asiago cheese as originating from Italy, there is no suggestion they have any understanding that it is certified as having particular qualities or that shows the Trade Mark being used in that way in Australia or on websites targeting Australians. Similarly, the evidence does not show any foreign website visits by Australian consumers. Even if they did, there is no evidence they would understand the extensive evidence of overseas use of ASIAGO as indicating the goods to which it is applied have been certified by or on behalf of the Applicant as to their quality or characteristics, as opposed to indicating a type of cheese that originated in that region but now may be produced anywhere.
The Opponent acknowledged that the website exhibits of the cheese wheels displayed the word ASIAGO, but they are 10kg rounds of cheese and there is no evidence that consumers ever see the whole wheel. If they did, the Opponent maintained that it does not establish that they would they recognise the Trade Mark as anything other than the name of a type of cheese. The evidence from the specialty cheese shop owners, that they believe consumers identify the cheese as originating from Italy, relates only to a very small proportion of consumers of specialty cheeses. Even if taken at face value, it does not establish that these customers understand the Trade Mark to refer only to cheese made in a particular region of Italy or that it is certified by the Applicant. In the isolated examples of the Trade Mark being used, the Opponent noted that it is used with ‘DOP’, which serves as indicator of certification not the word ASIAGO. Similarly, the Applicant’s Rules were said to indicate that it was the ASIAGO logos (paragraph (c) of the SGP) which were the relevant indicators of certification, not the word ASIAGO. It was further submitted that Australians are accustomed to European cheese names without regarding them as only being made in the one place.
In relation to ‘other circumstances’, the Opponent contended that even though the cheese is a PDO under European Law, this is insufficient to constitute ‘other circumstances’ such that the Trade Mark might be regarded as having become adapted so as to distinguish the Goods certified by the Applicant (or an approved certifier) from those not certified. It noted that PDOs do not apply outside the EU and they do not limit Australian traders describing their goods using common food names. Given the evidence of multiple other traders who already use the Trade Mark and the Australian registration of trade mark 1680928 for SARTORI ASIAGO, the Opponent contended that the effect of the Rules ‘if implemented would prevent honest traders who have produced asiago cheese outside Italy and who are not the Applicant’s members from describing their cheese as such even though it has been lawfully produced and is accurately described.’
Applicant’s submissions
The Applicant rejected the requirement for a ‘certification characteristic’, noting the Opponent’s acknowledgement that there is no such requirement in the Act and that the delegate had relied in that ex parte matter on UK decisions which were based on different legislative provisions. It argued that if the ‘legislature intended for certification marks to contain on their face, an ‘express indication’ of a ‘certification characteristic’ it would have legislated for this’. Noting that the Explanatory Memorandum was also silent, the Applicant submitted there was no basis on which such a requirement could be inferred. It also contended it was inconsistent with IP Australia’s approach to CTM registration as demonstrated by other CTMs on the register such as ‘Stilton’ and ‘Darjeeling’.
The Applicant also rejected the Opponent’s characterisation of the word ‘Asiago’, submitting that it is not an English word and is not descriptive of a ‘particular type of cheese’ in English or Italian. Applying Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella)[13], it submitted that the correct test ‘is to determine the ordinary meaning of a word to the target audience’ in the context of the nature of the goods and the circumstances in which they are sold. Noting the delegate’s finding in a prior ATMO decision that Asiago cheese ‘only accounts for a miniscule proportion’ of the total volume of cheese imported into Australia[14] it contended that the evidence establishes it is a specialty cheese targeted at a niche market and that the relevant audience would understand the ordinary signification of ASIAGO as a ‘high quality cheese that is produced in the Asiago region in Italy using tightly controlled production methods and quality controlled by a controlling body or authority’. That is, that the relevant Australian consumers and traders would understand that when the Trade Mark is applied to the Goods it ‘denotes the goods have been certified by the Applicant.’
[13] [2014] HCA 48; (2014) 254 CLR 337 [57].
[14] Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64 [18].
The Applicant further submitted that the Opponent had provided no evidence for its claim that Australian consumers would ordinarily identify ASIAGO as a geographical location from which the cheese originated and even if they did, this does not preclude the Trade Mark ‘also functioning as a certified mark’. It contended that ‘the relevant audience would associate the Opposed Mark with the geographical location and history of the cheese, they would then be aware of its highly controlled production methods and certification process’ as shown in its evidence. In response to Opponent’s contention that there is no evidence of the Trade Mark being used in a certification sense, it noted the evidence of the use of ASIAGO on cheese wheels and observed that it can only be applied this way with the Applicant’s authority. In addressing whether other traders might want to use the Trade Mark, the Applicant noted that certification allows other traders to use the Trade Mark provided they meet the Rules. There is no need for any other traders to use the Trade Mark unless they were seeking to trade off its reputation, in which case it would not be legitimate use. The Applicant further submitted that the Opponent’s evidence of use of the Trade Mark was irrelevant because it was not evidence of supply or distribution of ASIAGO cheese by others in Australia.
In relation to whether the Trade Mark has become adapted to distinguish because of use or other circumstances (s 177(2)(b)), the Applicant noted that this was the basis on which the Examiner had accepted the Trade Mark. Specifically, that under Italian law, ‘cheese produced in the Asiago region in Italy cannot be promoted and sold under the name ASIAGO unless it has been certified by the Applicant.’ It was also claimed that this was the basis for the Australian registration of the other Applicant’s other trade marks (see paragraph 19). In addition, under TRIPS Article 22, the Applicant said Australia has obligations to provide mechanism for protection of GIs in Australia, which for non-wine can only be achieved by registration as CTM.
Findings
There is nothing on the face of the Trade Mark that indicates the Goods have been certified however, as the Opponent and Applicant both acknowledge, the Australian legislation does not require an express indication. The test under s 177 of the Act is that the Trade Mark must be capable of distinguishing the Goods, as certified by the Applicant or an approved certifier, from goods not so certified.
The parties relied in this context on the decisions in Cantarella[15] and Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) [16] both of which considered the meaning of ‘inherent adaptation to distinguish’ under s 41 of the Act. I note that Section 170 of the Act specifically excludes the application of s 41 to the certification trade mark provisions in Part 16. Nevertheless, aside from the express inclusion of particular characteristics in a CTM that are expressly excluded from s 41[17], s 177(2)(a) requires an assessment of the extent to which a CTM is ‘inherently adapted to distinguish’ an applicant’s goods and/or services, not from the goods or services of another person as in s 41, but from goods or services not so certified. In this context I consider that the assessments of the meaning of ‘inherent adaptation to distinguish’ by the relevant authorities, in the absence of more specific authority, remain relevant, subject to the terms of s 177.
[15] [2014] HCA 48; (2014) 254 CLR 337.
[16] [1964] HCA 55; (1964) 111 CLR 511.
[17] Note 1 to section 41 of the Act.
In this regard I note that in Clark Equipment Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not ‘adapted to distinguish’ the applicant's goods, defined the crucial question practically as I have stated it…[18]
[18] Clark Equipment [5].
By way of extrapolation, applying s 177, it might be said that the question is whether the certification trade mark, considered apart from the effects of its registration, is such that by its use the applicant is likely to obtain its object of distinguishing its goods as certified from those goods not so certified.
And as Yates J observed in Apple Inc. v Registrar of Trade Marks:
What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought…[19]
[19] [2014] FCA 1304; (2014) FCR 511 at [11]
As noted above, the Applicant submitted that the ordinary signification of the word ASIAGO to the target audience is of a high quality cheese that is produced in the Asiago region in Italy using tightly controlled production methods and that is quality controlled by a controlling body or authority. It is not clear to me how the evidence substantiates this submission. Even if I accept the Applicant’s submission that the relevant audience is appropriately to be regarded as a niche market of discerning buyers and sellers, the evidence of the one cheese importer and two owners of specialty cheese stores reflects their subjective experience of dealing only with Italian asiago cheese certified by the Applicant. It does not indicate the ordinary signification of the word to consumers and traders generally. Therefore, I give it little weight as evidencing what the Applicant’s identified audience understands as the ordinary signification of the word ‘Asiago’.
In any event, in the website exhibits of the store owners’ use of the Trade Mark, it is always accompanied by PDO or DOP or with the other Asiago logo marks. For example, on the rind of the cheese wheels, which the Applicant claimed demonstrated its use in a certification sense, the word ‘ASIAGO’ is always accompanied by the Asiago logo marks. As the Opponent observed, the Rules associated with the use of the Trade Mark ‘identify the Asiago logo as ‘the basic component of the identity system’ for the regime and the ‘constitutive logo of the denomination’ rather than the word ASIAGO, which is simply described as the ‘designation’ for the cheese itself’. [20]
[20] Eade declaration, paragraphs 15-17; Rigoni declaration, exhibit FR-8.
I am also not persuaded that the Applicant has appropriately characterised the audience. The Goods are simply ‘cheese’; therefore the audience, or persons concerned, are Australian cheese consumers and traders. Although there is no other evidence from Australian consumers or traders, it does not mean that the ordinary signification of the word ‘Asiago’ cannot be assessed, even if it is not a word that is demonstrably widely understood.[21]
[21] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [85] (Katzmann J, Greenwood J agreeing at [2])
The evidence establishes that ASIAGO is the name of a cheese and also the name of the town in the Northern Italy region in which this style of cheese originated. The International Dairy Federation, in listing it with several other types of cheeses, describes it as a ‘nutty flavored cheese that hails from Europe’[22] and the Rigoni declaration acknowledges that it is produced elsewhere[23]. The Wikipedia page referred to in the Rigoni declaration, after referring to Italian asiago says, ‘Most Asiago, however, is made elsewhere using techniques and cultures that produce a cheese of the same or similar flavor’.[24] In addition, the Morris declaration evidences use of the word ‘asiago’ by several US companies and exhibits the US Code of Federal Regulations which stipulates the production process for ‘asiago’ cheese. While there is no evidence of Australian production of the cheese, the Opponent exhibited the evidence filed by the Sartori Company in its Australian application [25] to register SARTORI ASIAGO (TM no. 1680928) which demonstrates its aim to apply the mark to cheese in Australia. That evidence also demonstrated that the Sartori Company had been using ‘asiago’ as a descriptor for cheese in the US since 1950. A screenshot from an Australian cooking website was also exhibited which provide a recipe for hamburgers which included as an ingredient ‘asiago cheese (can substitute with swiss or cheddar slices)’.[26]
[22] Rigoni declaration, exhibit FR-3, p80
[23] Rigoni declaration, paragraph 16.
[24] Rigoni declaration, exhibit FR-3, p93.
[25] Morris declaration, exhibit SM-5.
[26] Rigoni declaration, exhibit FR-2, p74.
Overall therefore, I consider that the ordinary signification to the relevant Australian audience of the word ‘Asiago’ is as the name of a cheese which originated in or around the Italian town of Asiago. It is descriptive of the Goods and, as the Opponent submitted, ‘says nothing about whether the goods sold under it have been certified in accordance with a particular regime in relation to their quality or characteristics.’ It follows that I consider there is nothing inherent in the Trade Mark that denotes the Goods as certified by the Applicant nor is there any evidence that the general public has been educated to view the Trade Mark as an indicator of certification.
S 177(2)(b)
Given this I am also required to consider whether the Trade Mark has, because of use or other circumstances, become adapted to ‘so’ distinguish those Goods certified by the Applicant, that is, from those goods not certified.
In relation to use, as noted above, there has been limited use in Australia. The Applicant quoted the Sartori Company’s evidence in a previous opposition that Asiago cheese ‘only accounts for a miniscule proportion of the total’ volume of cheese imported to Australia[27]. As cited by the Opponent, and as the delegate found in that matter when assessing this Applicant’s claim of reputation in its marks under s 60 of the Act:
Rigoni explains that ‘Asiago’ is the name of a type of cheese produced by a number of different makers. 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. Based on the evidence before me I am in agreement with the Applicant’s reasoning that:
... there is no reason to suppose that such consumers considered the term to be anything other than simply a descriptive term for the particular type of cheese, just like parmesan, mozzarella, ricotta or mascarpone.
…
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.[28]
[27] Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64 [18].
[28]Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64 [19], [21].
The Applicant relied on its witness evidence of use of the Trade Mark and submitted that through this use it has become adapted to distinguish the Goods from those not so certified. As noted above, this evidence is very limited. As also noted above, the evidence indicates that ASIAGO is used in conjunction with other identifiers such as ‘PDO’ and the other ASIAGO logo marks, reinforced by the Applicant’s Rules which identify the logos as the ‘mark of origin’ and the ‘identifying mark’ for the PDO regime, rather than word Asiago itself.[29] That is, the Rules themselves indicate that it is the logo rather than the word ASIAGO solus, that distinguishes the Goods as certified by or on behalf of the Applicant.
[29] Eade Declaration, paragraphs 15-16.
In this context I am not satisfied that the evidence establishes that the Trade Mark has become adapted through use to relevantly distinguish the Goods.
Regarding ‘other circumstances’, while I note the Applicant’s submission that the Examiner’s acceptance of the decision was apparently based on the existence of the Italian Ministerial decrees, my role is to assess the application afresh. The Applicant stressed Australia’s obligations under international treaties to recognise GIs even if the PDO regime does not technically apply to Australia. It noted the ACCC Minutes in considering the Trade Mark in which it was stated that ‘in this context, GIs include PDOs such as the Asiago cheese PDO’. Even so, ‘other circumstances’, in this context, refers to circumstances relating to the capacity of the Trade Mark to relevantly distinguish the Goods, not to compliance with Australia’s international obligations. The PDO regime does not apply to Australia and therefore I consider it unpersuasive to constitute ‘other circumstances’ such that the Trade Mark has become adapted to relevantly distinguish the Goods.
On the basis of limited use of Trade Mark in Australia, the manner of that limited use and the lack of any persuasive evidence of marketing and/or promotion or other education of the public, the evidence has failed to establish that by use or other circumstances the Trade Mark has become recognised in Australia by relevant consumers as denoting cheese certified by the Applicant. That is, there is no indication that Australians have come to understand that the Trade Mark as an indication that the Goods sold under or by reference to it have been certified by the Applicant as having particular qualities or characteristics which distinguish them from goods that have not been so certified.
Having taken into account the extent to which the Trade Mark is inherently adapted to distinguish the Goods certified by the Applicant (or an approved certifier) from those not so certified, or the extent to which because of use or other circumstances it has become so adapted, I find the Opponent has discharged its onus and, on the evidence, the Trade Mark is not capable of distinguishing the Goods certified by the Applicant or an approved certifier from goods not so certified.
Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP or the further submissions made by the parties in this regard. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.
Decision
Section 176 of the Act relevantly provides
Acceptance or rejection of application
(1) The Registrar must accept the application if:
(a) the application is made in accordance with this Act; and
(b) there are no grounds for rejecting the application; and
(c) the Commission has given a certificate under subsection 175(2).
Otherwise the Registrar must reject the application.
As I have found above, there are grounds for rejecting the application under s 177. It follows that the Trade Mark must be rejected.
Costs
As the Opponent was the successful party, I award costs against the Applicant under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
M.Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 March 2020
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