US Dairy Export Council v Consorzio per La Tutela Del Formaggio Asiago

The matter before the delegate of the Registrar concerned an opposition by the US Dairy Export Council (the Applicant) to the registration of the trade mark 'ASIAGO' by the Consorzio per La Tutela Del Formaggio Asiago (the Opponent). The Opponent sought to register the mark for cheese. The Applicant opposed this registration, arguing that 'asiago' had become a generic term for a style of cheese and had lost its geographical significance, meaning it did not distinguish the Opponent's cheese from that of other traders.

The primary legal issue for determination was whether the trade mark 'ASIAGO' was capable of distinguishing the Opponent's cheese goods from those of other traders, or whether it had become a descriptive or generic term for a type of cheese, thereby losing its distinctiveness. This involved assessing evidence regarding the use and perception of the term 'asiago' in Australia, particularly in relation to its geographical origin and its association with a particular style of cheese.

The delegate considered declarations from various individuals, including those from the US and Australia, who provided evidence of the widespread production and sale of 'asiago' cheese in the US since the 1950s, suggesting it had become a generic descriptor. Conversely, evidence was presented from an Australian cheesemonger, a retailer of specialty European cheese, and an importer of Italian cheese, all of whom stated their belief that Australian consumers familiar with the term would associate 'ASIAGO' with cheese originating from Italy and possessing a particular quality due to its Protected Designation of Origin (PDO) status. The delegate's reasoning focused on whether the evidence demonstrated that the mark, in the Australian context, functioned as an indicator of geographical origin and quality, or as a generic descriptor of a cheese style.