Implications of IPONZ rejecting Swiss Gruyère Certification under new GI rules

Monday 14 October, 2024

The Intellectual Property Office of New Zealand (IPONZ) has refused the registration of GRUYÈRE as a certification mark for cheese by a group of Swiss cheese producers. This follows the changes to the Geographical Indications (Wine and Spirits) Registration Act 2006 (the GI Act) which came into force on 1 May 2024 and recognise GRUYÈRE as a geographical indication (GI) for cheese originating in the Gruyère region in France.

This decision, coupled with the registration of GRUYÈRE as a GI, could restrict the future use of GRUYÈRE by non-French traders.

What is a certification mark?

A certification mark is a type of trade mark that indicates that certain goods or services comply with established certification criteria. The criteria can relate to the geographic origin, material, manufacturing process, quality, accuracy, performance, or other characteristics of the relevant products or services.

Unlike a normal trade mark, the owner of a certification mark cannot use the mark in trade itself, and must permit others who meet the relevant criteria to use it.

Like other trade marks, a certification mark must be distinctive and capable of distinguishing the certified products or services from those that are not certified.

Historical use of certification marks in place of GIs

A GI is a name which identifies a product as originating in a region, area or locality where the qualities, reputation or other characteristics of that product are related to its geographic origin. The most well-known is Champagne, used to refer to particular wines originating in the Champagne region of France. GIs are discussed in more detail, along with the key changes to the GI Act in our article which can be found here.

Before GI registrations were introduced in New Zealand, certification marks have at times been used by industry groups united by region to indicate the geographic origin of a product, acting as a “de facto” GI protection scheme.

When GI registrations became available in New Zealand, they provided a way to associate the qualities, characteristics and/or reputation of products like wine, spirits and cheese with their geographic origin without having to comply with other certification criteria.

The Gruyère case

Interprofession du Gruyère (IDG), is an organisation representing the interests of Swiss Gruyère cheese producers. IDG’s trade mark application sought to register GRUYERE as a certification mark registration in New Zealand. The aim of that application was to protect the use of the name for cheese products that originate from the Gruyère region in Switzerland. The application was refused by IPONZ on the grounds that GRUYERE is descriptive of a type of cheese and lacks distinctive character as required by section 18 of the Trade Marks Act 2002.

Despite evidence of some recognition of Gruyère as a specific type of cheese originating from Switzerland, IPONZ found that the evidence was not sufficient to establish a predominant distinctiveness over its descriptive use in New Zealand.

Adding to the complexities of the Gruyère case, the cheese is produced in both France and Switzerland, in specific regions, with varying levels of recognition given to those geographic origins in different countries.

Similar reasoning from IPONZ recently prevented the registration of a certification trade mark for BASMATI, filed by a group of rice producers from India. The IPONZ examiner determined that the BASMATI mark could not distinguish between Indian rice producers and other producers in the ‘Basmati Growing Area,’ particularly those in Pakistan. The BASMATI mark was considered purely descriptive of a type of rice and not distinctive enough to be registered as a certification mark.

Impact on the use of “Gruyère” under the amended GI Act

Under the GI Act, “Gruyère” is protected in New Zealand as a GI for cheeses originating in France. The term is protected as a GI (or ‘Appellation of Origin’) in the European Union for cheeses in both France and Switzerland. However, as the amendments to the Act follow the FTA between New Zealand and the European Union (and Switzerland is not an EU member state), New Zealand only recognises “Gruyère” as a GI for cheese from France.

Unlike most GIs recognised in New Zealand, the protection of the GI "Gruyère" will not prevent prior users of the term "Gruyère" in New Zealand from continuing to use that term provided they had used the term in good faith for at least five years before 1 May 2024. Any use of the term after this date must be accompanied by a legible and visible indication of the geographical origin of the cheese.

Provided that it is clearly indicated that the cheese is from Switzerland, the amendments to the GI Act will not prevent Swiss producers of Gruyère (who were already trading in New Zealand prior to May 2024) from using the term “Gruyère”. However this could be a significant barrier for all non-French traders seeking to enter the market, who might expect to be able to use the same term as existing Swiss and French traders.

Get in touch with one of our IP experts if you have any questions about trade marks, GIs or other descriptions you can use to market your products.