US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Gorgonzola

[2020] ATMO 44

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 1705467 (29) – GORGONZOLA– in the name of Consorzio Per La Tutela Del Formaggio Gorgonzola

Delegate:	Nicholas Smith
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd Applicant: Shauna Ross of Counsel instructed by Spruson & Ferguson
Decision:	2020 ATMO 44 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 177 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by US Dairy Export Council (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the certification trade mark (‘CTM’) which is the subject of the application detailed below in the name of Consorzio Per La Tutela Del Formaggio Gorgonzola (‘Applicant’): 

Application Number:	1705467
Filing Date:	7 July 2015
Goods:	Class 29: Cheese (‘Applicant’s Goods’)
Trade Mark:	GORGONZOLA	(‘Trade Mark’)

1. Following the advertisement on 1 March 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 1 May 2018.  Following correspondence regarding the correct form of the Statement of Grounds and Particulars the Opponent then filed a final Statement of Grounds and Particulars on 24 July 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58, 59 and 177 of the Act[1].  The Applicant filed a Notice of Intention to Defend on 20 August 2018. 

   [1] The SGP also sought that the Registrar refuse registration as a matter of discretion, which is not the basis of a ground of opposition.

   Evidence

2. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 20 November 2018 by Shawna Morris, the Senior Director of the Consortium for Common Food Names, with Exhibits SM-1 to SM-14 (‘Morris Declaration’); and

   ·Declaration made on 26 November 2018 by Cameron Bruce, General Manager of the specialty cheese division of Lion-Dairy & Drinks Pty Ltd, with Exhibits CB-1 to CB-2 (‘Bruce Declaration’);

3. The Applicant filed the following evidence in answer:

   ·Declaration made on 8 Mach 2019 by Stefano Fontana, the Director of the Applicant, with Annexures A-I, M and Confidential Exhibits J, K and L (‘Fontana Declaration’); and

   ·Declaration made on 11 March 2019 by Aarthi Singaravelu, solicitor employed by Spruson & Ferguson, the Applicant’s Representative, with Annexures A to C (‘Singaravelu Declaration’).

4. The Opponent filed the following evidence in reply:

   ·Declaration made on 3 June 2019 by Lauren Eade, Senior Trade Marks Counsel for Davies Collison Cave, the Opponent’s Representatives, with Exhibits LFE-1 to LFE-9 (‘Eade 1’); and

   ·Declaration made on 15 January 2019 by Lauren Eade, with Exhibit LFE-10 (‘Eade 2’). Eade 2 was filed outside the time but was considered pursuant to the provisions of Reg 20.19 of the Trade Marks Regulations 1995 (Cth). Eade 2 primarily contained one annexure that was directly relevant to the proceeding and not in existence at the time Eade 1 was prepared.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 4 July 2019 the Applicant requested an oral hearing.  Following several delays caused by availability of counsel, the matter was set down for a hearing in Sydney on 18 February 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 10 December 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 4 February 2020 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 11 February 2020 (‘Applicant’s Submissions’).  At the hearing Shauna Ross of Counsel represented the Applicant, appearing in person and Stephen Rebikoff of Counsel represented the Opponent, also appearing in person.

6. The Applicant’s Submissions contained a section titled ‘Schedule 1: Chronology’ that referred to particular events and legal instruments that related to the protection of the Trade Mark in Europe.  On 14 February 2020 the Applicant filed a document described as a ‘Bundle of Instruments’ which contained the documents referred to in the Chronology.  On 18 February 2020 the Applicant filed an additional document being an English translation of one of the documents included in that bundle.  This Bundle of Instruments (including the English translated document) consisted of:

   a) a number of documents that had already been included as evidence in this matter;

   b) a number of publically available European Union and Italian regulations and laws relating to the protection of the Trade Mark; and

   c) one internal document that was not publically available. 

7. The Opponent at the hearing objected to the consideration of the documents that fall in categories b) and c) above (‘unfiled evidence’) as the additional material had not been filed in accordance with the timeframe set out in the Trade Marks Regulations 1995 (‘Regulations’). The Applicant noted that much of the Bundle of Instruments consisted of material that had been included in evidence that was properly filed and the unfiled evidence had been referred to in the Applicant’s Submissions and (with one exception) in any event was publically available material that the Opponent could have had reference to. The Applicant noted that I could have regard to this material pursuant to the provisions of Reg 21.19 of the Regulations since this was publically available material that the Opponent had a reasonable opportunity to make representations about.

8. The unfiled evidence is evidence that goes to the history of the legal protection of the Trade Mark that exists in Europe. While it is standard (indeed permitted under the various Evidence Acts) for judicial notice to be taken in respect of matters of Australian law, including legislation and case law, this does not apply to the unfiled evidence, since it consists of evidence of overseas law, not statements of the law that governs this proceeding. Secondly as the unfiled evidence is documentary evidence, such evidence should be provided in the form of a declaration as required under the Regulations, with a person swearing to the authenticity of these documents. This was not done.

9. Notwithstanding the lateness of the filing of this evidence and the improper manner in which it was filed, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time. As the delegate, I may do so as I am not bound by the rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate (reg 21.15(4)) and/or may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity (reg 21.19). The application of these provisions is discretionary and a party cannot compel the Registrar or a delegate in this regard. I also note that in numerous decisions delegates have cautioned that reg 21.15(4) and reg 21.19 should not be used as a substitute for the repealed further evidence provisions.

10. The party who has filed the out of time material must make a compelling case in favour of it being considered. In this matter I am not satisfied that a compelling case has been made and I decline to consider the unfiled evidence. The unfiled evidence has been available to the Applicant at all relevant times during the proceeding and could easily have been filed as evidence in answer, or in any event considerably earlier than 1 week prior to the hearing. There was no explanation provided as to why this material could not or was not provided earlier in this proceeding. I contrast the Applicant’s approach with that of the Opponent, who filed its late filed material well in advance of the hearing, in the proper form, with an explanation as to why this material was filed late, namely that it was not available at the time its EIR was filed. I decline to consider the unfiled evidence. I note that this decision is not determinative of the outcome, the unfiled evidence being primarily relevant to the s 59 ground of opposition that I have not had to consider.

11. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the   application was opposed has been established.  

    In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

    The Opponent

12. The Opponent does not provide any information about itself but it is my understanding that it is a non-profit body that represents the trade interests of dairy producers from the United States.  

13. The relevant claims/statements in the Bruce Declaration can be summarised as follows:

    ·     The declarant has worked in the cheese industry in Australia for 4 years.  He understands that the Trade Mark describes a particular style of cheese, being a blue veiny cheese.  He does not consider that the Trade Mark identifies cheese produced in a particular geographical area or regional variation.  In his experience, the Trade Mark operates in Australia as a particular style of cheese.  It does not distinguish cheese goods certified by the Applicant from those of other traders.

    ·     The declarant’s employee has produced a cheese described as ‘gorgonzola-styled’ since 1998.  This cheese has received a number of awards.  

14. The relevant claims/statements in the Morris Declaration can be summarised as follows:

    ·     The declarant understands that the Trade Mark describes a particular style of blue vein cheese.  This description has been used for many years in a number of countries, including for cheese that does not originate in Italy (and therefore would not meet the requirements of the Certification Rules).  Evidence of the descriptive use of the term Gorgonzola dates back to 1882, including use to describe a type of cheese produced by various Australian dairy producers for over 100 years.

    ·     As a result of the use of the Trade Mark for its descriptive use for more than 100 years, consumers in Australia would understand the Trade Mark as indicating a style of cheese (blue vein) rather than a particular origin.  This use is consistent with how the term is understood in the United States and Canada.

    ·     The Certification Rules identify CSQA Certificazioni SRL as the entity that is responsible for the certification of goods, not the Applicant.

    ·     Gorgonzola is also a town in Lombardy.  Cheese is not produced in Gorgonzola, as it has been absorbed in the greater Milan areas.  The Certification Rules permit the use of the Trade Mark in association with products produced well outside Milan.  As such Australian consumers would not recognise the geographical signification of Gorgonzola, since the vast majority of cheese certified by the Applicant is not from the Milan region.

    ·     The proposed Certification Rules do not meet the requirements under Australian law as the proposed certification process involves certification taking place outside Australia and does not include dairy products produced in Australia.

15. The Annexes to the Morris Declaration include documents dating from 1881 to the present referring to the importation, production and sale of cheese described as Gorgonzola or Gorgonzola style cheese.  These documents indicate cheese described as Gorgonzola cheese is and has been produced from a variety of sources, both in Australia, Italy and elsewhere.  The Annexes also contain extracts from Australian media, much of which that postdates the relevant date (but can be used to show the usage of the word Gorgonzola at the relevant date) showing use of Gorgonzola as a descriptor of a type of blue vein cheese.  

16. The relevant claims/statements in Eade 1 can be summarised as follows:

    ·     In 2017/18 Australian domestic cheese production was approximately 377,000 tonnes and imported cheese was approximately 110,964 tonnes.   Lion-Dairy & Drinks Pty Ltd sold 5 tonnes of its Australian-made Endeavour Blue Gorgonzola Style cheese.

    ·     The Applicant states that the Trade Mark is a protected designation of origin in the European Union (‘PDO’).  Australian law does not recognize PDOs in Australia unless specifically protected under Australian law.  The EU and Australia are presently engaged in trade negotiations which may result in the protection of various EU PDOs under  Australian law. 

    ·     Cheeses described as Gorgonzola has been offered in Australia since the 1880s

17. Eade 2 provides a copy of a document published on 13 August 2019 by the Department of Foreign Affairs and Trade confirming that the European Union seeks, pursuant to the EU-Australia Free Trade negotiations, the protection of the Trade Mark as a PDO.

    The Applicant

18. The Applicant is a consortium, established in 1970, which focuses on ensuring compliance with and enforcement of national and international legislation protecting the GORGONZOLA PDO.   Its members are 39 companies in Italy that produce cheese certified by the Trade Mark (‘Recognised parties’).

19. The relevant claims/statements in the Fontana Declaration can be summarised as follows:

    ·     The Trade Mark is a PDO in the European Union for cheese and EC Regulation 1151/2012 requires agricultural food products that benefit from a PDO to be produced in accordance with certain rules, described in the Certification Rules.  Hence cheese manufactured in accordance with the Certification Rules will be referred to as GORGONZOLA cheese.

    ·     Gorgonzola is raw-paste mouldy cheese made exclusively from pasteurised whole cow’s milk with characteristic blue-green and/or grey-blue veins due to the development of mould.  It is produced in Italy in the Area of Protection defined in the Certification Rules.  The quality of the product is affected by certain natural factors in the defined geographical areas and human factors including the traditional craft cheese-making techniques that have been handed down over centuries.

    ·     3 of the Recognised parties have exported Gorgonzola cheese to Australia and each has done so since at least 2001.  Approximately 1% of Gorgonzola Cheese was exported to Australia.  All of these products display the Trade Mark.

    ·     The Applicant engages in a variety of advertising and marketing to inform customers about the GORGONZOLA PDO, including distribution of brochures, advertising via its websites, holding seminars and attending trade fairs.

    ·     The success of the GORGONZOLA PDO has led to many imitation products that sell a cheese that is referred to as Gorgonzola-style or similar and whose production does not comply with the Certification Rules.  Such cheese is fake, imitation or counterfeit.  In particular none of the cheeses referred to in the Morris or Bruce Declarations are genuine GORGONZOLA cheese.

    ·     The Applicant has sought registration of the Trade Mark in numerous countries throughout the world.

20. The Annexes to the Fontana Declaration include confidential documents referring to the volume of cheese certified by the Trade Mark sold in Australia, revenue from those sales and advertising expenditure engaged in by the Applicant in Australia.  Given the size of the cheese market in Australia as expressed in Eade 1, I find the figures relating to revenue, volume and advertising expenditure in Australia to be unimpressive.  

21. The Singaravelu Declaration consists of a series of annexes reflecting searches conducted by the declarant.  In particular:

    ·     Annex A consists of a search of the Australian Trade Mark Register to identify registered CTMs in classes 29-33.  There appear to be 174 such marks.

    ·     Annex B consists of a review of the CTMs identified in the search above to identify which of them cover dairy products.  There are 64 such marks, including STILTON, marks containing the words ‘padano’ and ‘grana padano’ and devices and a mark consisting of a stylised or fancy G (1705466) owned by the Applicant.

    ·     Annex C consists of a copy of the certification rules for some of the marks set out in Annex B.  Notably the (incomplete) regulations governing the STILTON Mark appear to limit use of the CTM STILTON to persons or producers resident or producing cheese within certain counties in the United Kingdom.  Similar restrictions appear to apply to the use of the CTM Parma Ham (use being limited to pigs being born, bred and slaughtered in particular regions of Italy).

    Grounds of Opposition, Onus and Standard of Proof

22. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 59 and 177 of the Act although in its submissions the Opponent indicated that it no longer presses the s 58 ground of Opposition. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 177. Accordingly, I have found it necessary to discuss this ground only. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

23. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] 

    [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

24. The date at which the rights of the parties are to be determined is 7 July 2015 (‘relevant date’), being the priority date of the application in Australia.[4] The Applicant, while noting that it was not determinative, sought to argue that the relevant date was the date of the decision based on the wording of s177(2)(b) which refers to ‘the extent to which… the certification mark has become adapted so to distinguishes those goods and services’. The Applicant suggested that the use of the present tense ‘has become’ suggested a legislative intention for the relevant date to be the date of the decision. I am not persuaded by this argument, noting that the present tense is also used in ss 41(4) (and indeed ss 58 and 59 of the Act) and it is undisputed that the date of which the rights of those parties are to be determined (for non IRDA applications) is the filing date. Furthermore there is no case law or compelling reason, and the Applicant has provided/advanced none, for the relevant date for a certification trade mark (which is subject to many of the same grounds of opposition as a standard trade mark) to be different to that of a standard trade mark.

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

25. Finally I note the Applicant’s reference to paragraph [83] of Trident Seafoods Corporation v Trident Foods Pty Ltd[5] which found that s44(3)(b) of the Act involves an application of the discretion at the time the discretion is exercised rather than at the priority date. That case involved a specific exception to the standard rule that operated to ensure alignment between ss 44(3)(b) and 101(3) of the Act when exercising the discretion of the Registrar. Section 177 does not involve the exercise of any discretion.

    [5] [2019] FCAFC 100

    Discussion

    Section 177

    Relevant Legal Considerations

1. There is limited case law relating to the consideration of certification marks however the recent case of Brillient Investment Publishing Pty Ltd[6] (‘Brillient’) summarised the broad principles relating to certification trade marks as follows.

   Part 16 of the Act deals with certification trade marks. Certification trade marks serve a different purpose to standard trade marks. A certification trade mark is a sign used, or intended to be used, to distinguish goods or services which are dealt with in the course of trade and certified by a person, or by another person approved by that person, in relation to quality, accuracy or some other characteristic.[7] Most of the provisions of the Act which relate to trade marks apply to certification trade marks and so apply as if a refence to a trade mark included a reference to a certification trade mark.[8] Notably, s 41 of the Act, which concerns the ground for rejecting an application for a standard trade mark on the basis of lack of distinctiveness, does not apply to certification trade marks, and, instead, Part 16 carries a similar provision which is set out and discussed below.

   A certification trade mark may only be used in accordance with the rules governing the use of the certification trade mark.[9] It is a requirement that a person who has filed an application for the registration of a certification trade mark file a copy of the rules governing the use of the certification trade mark.[10] The Registrar must send a copy of the rules to the Australian Competition and Consumer Commission (‘the Commission’).[11] The Commission must consider the application and rules and if satisfied as to certain matters issue a certificate to that effect and send a copy of the certificate to the Registrar.[12] The Registrar must accept the application if:

   ·the application is made in accordance with the Act;

   ·there are no grounds for rejecting the application; and

   ·the Commission has issued the aforementioned certificate.

   Otherwise the Registrar must reject the application but not before giving the applicant an opportunity to be heard.[13] ^[14]

   [6] [2019] ATMO 127.

   [7] Trade Marks Act 1995 (Cth) s 169.

   [8] Trade Marks Act 1995 (Cth) s 170.

   [9] Trade Marks Act 1995 (Cth) ss 171, 172.

   [10] Trade Marks Act 1995 (Cth) s 173.

   [11] Trade Marks Act 1995 (Cth) s 174.

   [12] Trade Marks Act 1995 (Cth) s 175.

   [13] Trade Marks Act 1995 (Cth) s 176 (the opportunity to be heard does not apply if the basis of rejection is that the Commission has not issued a certificate).

   [14] [2019] ATMO 127, [7]-[8].

2. Brillient stated that one consequence of the operation of s176 is that, unlike a standard trade mark, no presumption of registrability applies in respect of an application to register a CTM.  The Applicant argued that Brillient was incorrect in this respect. The Applicant’s Submissions compare ss 33 and 176 and note that, once the ACCC has given a certificate under s175(2) of the Act, there exists no discretion on the Registrar to reject the certification mark if the application is made in accordance with the Act and there are no grounds for rejecting the application. This is correct but the absence of a discretion by the Registrar is not relevant to the presumption of registrability.

3. Section 33 of the Act provides that the Registrar must accept the application unless he or she is satisfied that… (b) there are grounds under this act for rejecting it, while s176 provides that the Registrar must accept the application if…(b) there are no grounds for rejecting this application [emphasis added]. The wording of s176 tracks the wording used under the Trade Marks Act 1955, where no presumption of registrability existed.  Shanahan’s Law of Australian Trade Marks and Passing Off[15] also notes that no presumption of registrability exists for certification trade marks.

   [15] M Davison, I Horak  Shanahan ’s Australian Law of Trade Marks and Passing Off (6th edition, 2016) Thomson Reuters, [55.10].

4. Section 177 of the Act is reproduced below:

   Section 177 – 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.

5. Brillient further sets out the principles distinguishing the operation of s177 from s41 as follows:

   As indicated above, s 177 of the Act provides that an application for a certification trade mark must be rejected if the trade mark is not capable of distinguishing goods or services certified by an applicant or an approved certifier from goods or services not so certified.[16] This characteristic may be inherent in the certification trade mark—as contemplated by s 177(2)(a)—or the certification trade mark must have acquired that characteristic ‘because of its use or other circumstances’—as contemplated by s 177(2)(b). It is notable that s 177(2) does not provide for intended use to be taken into account in assessing a certification trade mark’s ability to distinguish (unlike, say, s 41(4)). Further, s 177(2)(b) does not refer to a particular point in time at which a sign must have acquired such ability to distinguish. That particular point in time is relevant to many aspects of standard trade marks, for example, s 41(3) of the Act and in the absence of contrary case law it seems to me that point in time ought to be the filing date of the application. It is necessary, therefore, that a certification trade mark which lacks inherent adaptation to distinguish must be have become adapted to distinguish as at the date the application to register it was filed.

   [16] Trade Marks Act 1995 (Cth) s 177(1).

   Section 41 of the Act deals with the distinctiveness of standard trade marks but, as stated, the Act specifically precludes s 41 from applying to certification trade marks.[17] As there is a dearth of case law concerning the application of s 177 it is tempting to turn to the case law which surrounds s 41; however, to do so demands caution as the function of the two types of trade mark is quite different. A comparison of the two sections is, nevertheless, instructive.

   [17] Trade Marks Act 1995 (Cth) s 170.

   Section 177 of the Act provides both a ground for rejecting an application to register a certification trade mark, and a ground for opposing the registration of a certification trade mark. We are concerned here with s 177 as it applies to the rejection of applications. In respect of the rejection of applications, the wording of s 177(1) has similarities to the wording of s 41(1). In essence, s 41(1) states:

   An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons. (emphasis added)

   In essence, s 177(1) states:

   An application for the registration of a certification trade mark must be rejected 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. (emphasis added)

   The function of a standard trade mark is to distinguish the trade origin of goods and services. The function of a certification trade mark is to indicate to consumers that the goods or services of interest have been certified by a particular person in relation to quality, accuracy or some other characteristic.

   The 1929 United Kingdom case of Wilson’s and Mathieson’s Ltd’s Application[18] concerned, inter alia, the registration of a ‘standardization mark’ under s 62 of the Trade Marks Act 1905 (UK). Standardization trade marks are an early form of certification trade marks. In that case, Tomlin J stated:

   It is not for me to express any view as to the wisdom or unwisdom of the registration of that class of mark as a trade mark under the Act, but it seems to be obvious that it would be desirable that a mark of that kind should, on the face of it, express what it is, namely a mark in the nature of a testing or certifying mark under Section 62, and that it should not blossom out into a design such as is commonly found in ordinary trade marks, and such as may, in certain circumstances, lead to confusion. So far as this mark is concerned, it is a mark which, beyond the initials B.W.A., of course contains no clue at all as to whether it is a testing or certifying mark.

   Another UK case, Union-Nationale Inter-Sydicale des Marques Collectives’ Appn[19] considered whether it was necessary that a standardization trade mark should identify the particular characteristics certified; Sterndale MR and Warrington LJ rejected the notion.[20] It is apparent, then, that at least one characteristic that a sign must have to be capable of distinguishing as a certification trade mark is that it is apparent that the sign is being used as a certification trade mark and not, for example, as a standard trade mark (‘the first characteristic’). As discussed above, this characteristic may be inherent in the sign or it must have been acquired by the application date. The case law surrounding s 41 provides some limited assistance in the assessment of this characteristic. What assistance it provides is discussed later in this decision.

   It seems to me, that there is a second characteristic that a sign must have to avoid rejection under s 177. Section 177 refers to ‘goods or services certified by the applicant or an approved certifier’ and ‘goods or services not so certified’. It seems obvious that ‘goods or services not so certified’ includes not only goods or services which are not certified at all, but goods or services which have been certified by a person or entity other than the applicant or an approved certifier: ‘an approved certifier’ being a person approved by the applicant as contemplated by s 169 of the Act. The ability to distinguish goods or services certified by the applicant from goods or services certified by another person is, therefore, also a necessary characteristic (‘the second characteristic’). This is an ability to distinguish which is much closer to that dealt with by s 41. The case law surrounding s 41 might, therefore, provide useful guidance in assessing this characteristic of a sign. The application of that case law is discussed below.

   If an enquiry shows that a sign lacks either the first characteristic or the second characteristic this will mean that it fails the test of ability to distinguish required under s 177 and the application to register it must be rejected.[21]

   [18] (1929) 46 RPC 80, 89.

   [19] (1922) 39 RPC 346.

   [20] Ibid 356–7, 362.

   [21] [2019] ATMO 127, [10]-[17].

6. I note the Applicant’s Submissions at [94] which state that there does not need to be an ‘express indication’ in order for a mark to function as a certification mark. I agree that such an express indication is not necessary, rather the appropriate approach is to consider the Trade Mark in line with the requirement under s 177(1) that it must be capable of distinguishing goods or services certified by the Applicant or approved certifier from goods and services not so certified. This test, while perhaps not explicitly requiring an express indication that a mark is intended to function as a certification mark, does require that the 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.

   Opponent’s Submissions

7. The ground of opposition pursuant to s s177 of the Act was particularised in the SGP as follows:

   The ordinary signification of the word “gorgonzola” 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 blue vein cheese, regardless of specific geographical origin.  Other traders in the goods of the application not only have a legitimate desire to use the word “gorgonzola” in Australia to describe their own cheese products, but have in fact done so in Australia and overseas for decates.

   The descriptive significance of “gorgonzola” is implicitly recognised in the certification rules filed in relation to the Application (the Rules), including clause 12.3 of the Control Plan for Protected Designation of Origin Cheese which notes that “PDO “Gorgonzola” is distinguished by two brands, to be applied in the area of production which are identified as  and .

   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 other traders.

8. The Opponent submits that in respect of the first characteristic (described in the Opponent’s Submissions as the certification characteristic), in the absence of any express indication within the Trade Mark that it is acting as a sign that the relevant goods have been certified in some way (such as including words such as ‘approved’, ‘accredited’ or ‘certified’) the Trade Mark will not be capable of functioning as a CTM unless the public have been educated to regard the mark in that way.

9. There is no inherent indication that the Trade Mark denotes goods certified by the Applicant and there is no evidence that the general public has been educated to view the Trade Mark as an indicator of certification.  In particular there is no evidence how the Applicant’s marketing material is distributed to Australian consumers or how many Australian consumers access the Applicant’s website.  Furthermore, there is extensive evidence that the word gorgonzola has been used, both overseas and in Australia, to refer to a type of cheese that is not subject to the Applicant’s Certification Rules.  As such it cannot be said that consumers in Australia have come to regard the Trade Mark as an indication that goods sold under this mark have been certified by the Applicant.

10. The Opponent submits, in respect of the second characteristic (described in the Opponent’s Submissions as the distinguishing characteristic), it is first necessary to take into account the extent to which the trade mark is inherently adapted to distinguish the goods and services to which the mark is applied from those of other traders, and hence consider the tests of ordinary signification of the mark in Australia and desire of other traders to use the mark, that are familiar with respect of s 41 oppositions[22]  The Opponent notes the difficulties that marks that have a geographical specification have in distinguishing goods if the goods are produced in that location or it is reasonable to suppose that the goods are produced there.

    [22] See Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, [70]-[71].

11. It is apparent from the evidence that the ordinary signification of the word Gorgonzola is either a geographical location or a type of blue vein cheese said to have historically originated from that location.  Accordingly the Trade Mark is directly descriptive of the characteristic of the goods and hence a word that other traders acting honestly would want to use to describe their own cheese with the same characteristics.  Indeed the Trade Mark has been used descriptively in Australia (and the United States and Canada) for over 100 years.  There is also no evidence that the Trade Mark has through use acquired the capacity to distinguish cheese certified by the Applicant from cheese that is not certified.  There is no consumer or survey evidence, limited evidence the spread of the Applicant’s promotional material, and the evidence of sales is of limited utility in circumstances where those sales use the Trade Mark for its descriptive purposes.  Finally the fact that the Trade Mark is a PDO under European Union law is not a basis to assume that the mark has come to distinguish goods certified by the Applicant as the EU PDO Law does not apply outside the European Union.

12. The Opponent notes that Applicant is separately seeking to protect Gorgonzola as a PDO as part of the EU-Australia free trade negotiation process that is currently underway and submits that the application to register the Trade Mark as a CTM is an attempt to manipulate the trade mark system into conferring a form of protection that the legislation has not seen fit to provide.

    Applicant’s Submissions

13. The Applicant in its submissions seeks to attack the nature of the Opponent’s evidence of use of the Trade Mark in Australia, suggesting it is less than complete and does not prove that the use of ‘gorgonzola’ in Australia does not describe cheese produced in Italy.  Furthermore it submits that the standard of distinctiveness applied by the Registrar for CTMs has been less stringent than that applied for standard trade marks and in particular Part 35, paragraph 1.5 of the Trade Mark Examination Manual notes that trade marks containing geographic or descriptive references may more easily meet the requirement for protection as a CTM.

14. The Applicant, in reliance on the statements in the Fontanta Declaration that due to climatic, cultural and other factors Gorgonzola cheese can only be produced in Italy, submits that the historical and current use of the Trade Mark by third parties other than those certified by the Applicant is not use actuated by proper motive, rather it amounts to an attempt to deceive the consumers that they are buying cheese similar or actually alike to that produced by the members of the Applicant.  As such it submits that the only parties that are likely to need to use the Trade Mark are the Recognised parties.

15. The Applicant submits that the historical and cultural connection between the Lombardy region and the Trade Mark, as well as the status of the Trade Mark as a PDO in Europe, are relevant other circumstances to be considered in s 177(2).

    Consideration of the evidence and meaning of the word Gorgonzola

16. While there is some limited force in the Applicant’s arguments regarding the quality of evidence of use in Australia, on the evidence before me I am prepared to conclude that the term ‘Gorgonzola’ has been used in Australia since at least 1882 to describe a type of cheese available in Australia.  While I agree with the Applicant that in some cases, the provenance of the Gorgonzola products described in advertisements and other documents appended to the Morris Declaration is not known, the Morris Declaration contains evidence that for over 120 years the Trade Mark has been used in Australia to describe a type or style of blue vein cheese, often (but not necessarily) produced in the Lombardy region of Italy.  The Opponent’s historical evidence of the use of Gorgonzola to describe a type of cheese may refer to cheese from the Lombardy region in Italy, or from elsewhere but regardless of the provenance of the cheese, does not show use of the Trade Mark to describe cheese that had been certified by the Applicant; on the evidence before me no cheese certified by the Applicant was imported to Australia before 1999.  Furthermore since 1999 the term Gorgonzola continues to be used in Australia by various producers, including producers other than the Recognised parties, to describe a type or style of cheese.  Given that both parties have used the term ‘style of cheese’ to describe Gorgonzola, I do not make a distinction between the evidence showing use of ‘Gorgonzola cheese’ and ‘Gorgonzola style cheese’; the use of ‘style’ is simply descriptive, albeit redundant.

1. After considering the standard tests for whether a mark is inherently adapted to distinguish set out in Clark Equipment Co v Registrar of Trade Marks[23] and Cantarella Bros Pty Limited v Modena Trading Pty Limited[24] I am satisfied that at the relevant date, the Trade Mark was not inherently adapted to distinguish goods certified by the Applicant from goods not so certified.  At the relevant date in Australia the ordinary signification of the Trade Mark was as a descriptive term for a type of blue-vein cheese (and a geographical reference to a town in Italy) historically originating in a particular geographical region of Italy.  There is clear evidence before me (based on existing use of the Trade Mark for its descriptive purposes) of the desire of other traders to use the mark for its descriptive properties.[25]  

   [23] [1964] HCA 55; (1964) 111 CLR 511, 514.

   [24] [2014] HCA 48; (2014) 254 CLR 337, [57].

   [25] See the test set out in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, [70]-[71].

2. The Applicant seeks to dismiss the evidence of use of the Trade Mark to describe a type of cheese as well as the desire of other traders to use the Trade Mark for this purpose as use not actuated by proper motives since, on its evidence, the only cheese that can be described as Gorgonzola cheese is that certified by the Applicant.  Hence other producers are not producing Gorgonzola cheese, rather they are producing fake or imitation cheese.  This is an extraordinary submission that seeks to put the cart before the horse.  As at the date of this decision, there is no law in Australia preventing the use of the Trade Mark to describe a type of cheese and there is evidence of over 120 years of use of the Trade Mark for precisely that purpose, much of which predates the Applicant’s existence and the status of the Trade Mark as a PDO in Europe.

3. I note the Applicant’s submissions, made both written and orally that the CTM provides for a less stringent standard of distinctiveness for trade marks containing a geographical indication, such as Gorgonzola.  In Parish of Pokolbin Incorporated [2014] ATMO 98 at 18 the Delegate, when in receipt of a similar argument, noted :

   Further, two observations are pertinent in relation to the comment in the Trade Mark Examiner’s Manual that ‘trade marks containing descriptive or geographic references may more easily meet the requirements for protection as a certification trade mark (in comparison to protection as a standard trade mark)’. Firstly, the passage quoted makes no comment on trade marks that consist of a geographic reference. Secondly, the Trade Mark Examiner’s Manual is a guide and does not have the force of law.

4. I agree with the Delegate’s conclusions though I note that this is not determinative in this case; the fact that the Trade Mark consists of a geographic reference is less relevant than the 120 years of descriptive use in Australia.  Furthermore even if I were to apply a ‘less stringent standard of distinctiveness’ this would not change the outcome as on the evidence before me the Trade Mark is not to any extent inherently adapted to distinguish.

5. Given my finding that the Trade Mark is not inherently adapted to distinguish goods certified by the Applicant from goods not so certified it is now necessary to consider the extent to which, because of its use or other circumstances, the Trade Mark has, at the relevant date, become adapted to distinguish those goods.

6. The Applicant has put on no direct evidence, such as surveys or the like, that cheese consumers in Australia have been educated to view the Trade Mark as an indicator that the cheese bearing the Trade Mark has been certified by the Applicant.  Rather the Applicant relies on the evidence of marketing and use of the Trade Mark.  The evidence of marketing is in my view minimal – the level of expenditure is low (especially in comparison to the size of the market for cheese in Australia) and there is no evidence of the number of consumers accessing the Applicant’s web page or having access to the Applicant’s brochures.

7. As for use, goods bearing the Trade Mark produced by Recognised parties have been sold in Australia since 1999.  The Opponent submits that the evidence of use by the Recognised parties of the Trade Mark does not show use as a certification mark, but as a descriptive term, with other device marks performing the role of certification mark.  I do not need to decide this issue as the amount of cheese exported by the Recognised parties in Australia is sufficiently small relative to the size of the cheese market in Australia that I am not in any way satisfied that because of its use the Trade Mark is recognised by consumers in Australia as denoting cheese certified by the Applicant. 

8. Paragraphs 74-76 of the Applicant’s Submissions suggest that in considering the application of s 177(2) I may consider the intended use of the mark under the ‘other circumstances’ provisions. This is incorrect. Section 41(4) allows the Register to consider intended use when considering whether a trade mark ‘…will not distinguish the designated goods’ [emphasis added]. Section 177(2) allows the Registrar to consider other circumstances in determining whether the CTM ‘has become adapted to distinguish those goods and services’ [emphasis added]. Since s 177 refers to adaptation to distinguish in the present tense, intended use can never be relevant in the application of s 177 of the Act. In any event there is insufficient evidence that the Applicant or Recognised parties intend to use the Trade Mark in Australia in any greater volume or in a different manner than it has done for the previous 20 years.

9. The Applicant submits that there are other circumstances (other than intended use) that I should take into account in considering the application of s 177 of the Act. I note that many of the other circumstances submitted by the Applicant such as ‘the preservation of the history and cultural significance of GORGONZOLA’ are not relevant to my consideration since ‘other circumstances’ in s 177(2)(b) only refers to circumstances that, as a result of their existence, cause the Trade Mark to become adapted to distinguish goods certified by the Applicant from other goods. S 177(2)(b) is not a general discretion.

10. The relevant other circumstances in the Applicant’s Submissions include the status of the Trade Mark as a PDO in Europe and the historical connection between cheese described as Gorgonzola and the Lombardy region. While some Australians may, as Mr Fontana does, consider the Trade Mark to refer to a particular cheese produced in the Lombardy and Piedmont regions, this does not affect my consideration under s 177(2)(b) as the question is not whether the Trade Mark denotes cheese produced in a region (such a question is a matter of sui generis PDO protection) but rather whether those cheeses have been certified by the Applicant and produced in compliance with the Certification rules.  Given the considerable use of the Trade Mark as a descriptive term in Australia over 120 years, the fact that the Trade Mark is a PDO in Europe (and has been for some time) does not affect my conclusion that the Trade Mark, at the relevant date in Australia, was not capable of distinguishing cheese certified by the Applicant from cheese not certified.

11. In the light of the Trade Mark’s lack of inherent adaption to distinguish and the insufficient use it enjoyed before the filing date relative to the size of the market, I am not satisfied, in terms of section 177 of the Act, that the Trade Mark is capable of distinguishing the Applicant’s Goods certified by the Applicant from goods not so certified.

    Decision

12. I have found the Opponent has established the ground of opposition it raised pursuant to s 177 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Costs

13. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    24 March 2020