Canadian Position on the "Gruyère" Trademark Battle

Different types of cheese stacked on a table
Photo by Daniela Paola Alchapar (Unsplash)

Booker Zhang is an IPilogue Writer and a 1L JD Candidate at the University of Manitoba.

 

Gruyère is a smooth-melting cheese initially made in Gruyères, Switzerland, which has a long history dating back to the 12th century. France and Switzerland used to fight for the exclusive rights to the “Controlled Designation of Origin” for Gruyère. As the debate heated up, the European Union (EU) stepped in and eventually decided to favour the Swiss in 2001. Interestingly, another battle regarding the Gruyère trademark is happening in North America. Gruyère producers have lost the lawsuit in the United States since District Judge T.S. Ellis ruled that Gruyère is a generic term for a type of cheese and does not refer solely to cheese from a specific geographic region. However, the fate of the Gruyère trademark in Canada is still up in the air.

Without a registered trademark, Gruyère producers expose themselves to the risk of dispute that may lead to a long and costly legal battle in Canada. If Canada follows the path of the United States to make Gruyère a generic term, Gruyère then cannot be the subject of trademark protection under Canadian law. In that case, everybody in Canada can make cheese in their way and name it ” Gruyère.” A spokesman Jonathan Fisch, from Switzerland’s agriculture department, stated that it would “threaten the reputation of the original product and its place in the foreign market and can only harm the entire sector.”

On August 23, 1994, Schweizerische Kaseunion Ag (Swiss Cheese Union, SCU) filed a certification mark application in Ottawa through Marks & Clerk, indicating that Gruyère is from Switzerland. The certification mark, if registered, would allow Gruyère to distinguish itself from others based on the place of production. Nevertheless, after two years of struggling, SCU abandoned the application on October 11, 1996.

However, SCU did not give up. They filed another application for official mark protection for Gruyère on September 15, 1995. An official mark would prohibit others from adopting or registering a trademark that is identical or nearly resembling as to be mistaken. However, to claim the benefit of an official mark, an entity must be a public authority in Canada. SCU, as a Swiss organization, does not meet the requirement. As a result, this application has remained as “advertised” since November 1, 1995.

What SCU could also try is to apply for a geographical indication. A geographical indication (GI) is a mark that indicates a link between a product’s distinct quality, reputation or other characteristics and its geographical origin. Famous examples include Feta from Greece and Scotch from Scotland. GI would be an excellent fit for Gruyère because cheese is one of the twenty-four categories available for GI protection. Most importantly, Canada has been strengthening its cooperation with the EU by the expansion of GI in 2017, and only a request with specific information is required to file a GI application. Gruyère is presently not appearing on the GI list held by Canadian Intellectual Property Office (CIPO). It would be a fascinating opportunity for Gruyère producers to end this trademark battle in Canada with a precious victory.

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