[Guest Post] Hands off my cheese! ASIAGO struggles for protection in Australia

Whenever things went badly for the Rat-in-a-Hat (a character in the Australian children's TV show Bananas in Pyjamas), he would exclaim frustratedly, "Ohhh... cheese and whiskers!" This Kat imagines that the owners of the geographical indication (GI) for the Italian cheese called "Asiago" are probably saying something similar after their recent, unsuccessful opposition before the Australian Trade Marks Office. The case forms part of the long-running conflict between Australian and European producers about control over the names of wines, cheeses, and other products. This Kat is delighted to share this guest contribution from Katfriend Aparna Watal (Halfords IP) to discuss the decision and its implications for GI protection in Australia.

Another tough decision for European cheesemakers
to swallow. Images from Pixabay.

Over to Aparna:

"Australians love their cheese, and when it comes to naming it, they’re not too keen on anyone telling them what they can or can’t call it. Enter the Consorzio Per La Tutela Del Formaggio Asiago (“the Consortium”), which, yet again, has found itself on the losing side of a battle to protect the name “ASIAGO” Down Under. 

In the decision of the Trade Marks Registrar delivered on the 2nd of August, Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2024] ATMO 140, the Consortium was reminded that Australia takes a very different view on Geographical Indications (GIs) than Europe does. While Europe fiercely protects its regional products, Australia takes a more market-driven approach to GI protection, particularly for food products like cheese. This perspective can make it more challenging to enforce and protect GIs in Australia.

Sartori's logo mark

Background

Sartori Company, a U.S.-based cheese company, applied to register a logo mark (see image of the logo mark from the application, right) in Australia in relation to Asiago-style cheese in class 29.

The Consortium opposed the application on the following two grounds: 

1. The consortium’s prior registration No. 1523300 (see image of the earlier mark, below) was deceptively similar to Sartori's mark due to the shared ASIAGO element and therefore should be rejected (section 44 of the Trade Marks Act 1995 (Cth));
2. Sartori's mark is likely to deceive or confuse consumers into believing that the cheese originated from the Asiago region in Italy (section 43 of the Trade Marks Act). 

The Consortium's earlier mark

The Registrar dismissed both grounds of opposition. In relation to the first ground, the Registrar held that the word ASIAGO refers to a type of cheese and not necessarily a product originating from the Asiago region in Italy. In fact, Sartori’s evidence showed that other traders outside of Italy were also using the word ASIAGO to describe their cheese goods.  The only common element between the parties’ marks was the descriptive element ASIAGO. As Sartori's logo mark contained other elements, including the prominent and distinguishing element SARTORI, the Registrar held that Sartori's mark was not deceptively similar to the Consortium's earlier mark.

Dismissing the second ground as well, the Registrar held that the name Asiago was not well-known in Australia. The Consortium argued that a consumer could be “unaware” of the meaning or connotation of a word, but still be confused. The Registrar disagreed. Her view was that if consumers didn’t know the connotation in the mark and ASIAGO is not protected as a GI in Australia, then there was no basis for consumers to be confused. The Registrar also noted that Section 43 can’t act as a “backdoor” to enforce European PDO protections in Australia that are not known and have not been otherwise protected in Australia. This demonstrates that GIs such as ASIAGO cannot be easily protected in Australia unless they are formally recognised. 

Certification Marks: A Proxy for GI Protection? 

Certification marks in Australia can serve as a proxy for geographical indication protection, indicating that a product meets specific standards related to its origin, quality, or method of production. However, the certification mark route can prove difficult as the Trade Marks Office usually raises a non-distinctiveness objection due to the geographical significance of the mark. For example, Parmigiano Reggiano, Parma Ham and Darjeeling are all registered certification marks in Australia. However, all of them faced distinctiveness objections and were only registered based on evidence of use. 

Indeed, the Consortium’s loss in the Sartori case is not its first defeat in Australia. In US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Asiago [2020] ATMO 45, the Consortium attempted to register ASIAGO as a certification mark in class 29 for cheese, which would have allowed them to control the use of the term in the Australian market. The US Dairy Export Council successfully opposed the registration on the grounds that ASIAGO was not distinctive enough to function as a certification mark in Australia. The decision hinged on the fact that ASIAGO had become a descriptive term in markets like the United States and Australia, used to refer to a style of cheese rather than a specific product tied to the Asiago region of Italy. The Delegate found that the word ASIAGO was seen as a generic descriptor for a type of cheese rather than an indicator of origin.  

What now? The Path Ahead for the Consortium and Food GIs 

The above decisions have complicated the Consortium’s efforts to protect the name in Australia. With certification marks out of reach for now, and no GI protection in Australia, the Consortium has been left to face the reality that ASIAGO is viewed by Australians as a generic term, not as a name tied to Italy.  

One potential route for the Consortium to secure protection for Asiago in Australia lies in the ongoing EU-Australia Free Trade Agreement (FTA) negotiations. The European Union has been pushing for stronger GI protections as part of the FTA, seeking to extend the robust protections afforded to products like ASIAGO in Europe to new markets like Australia. If the EU succeeds, the ASIAGO name could be protected in Australia in the same way it is in the EU, preventing its use by non-Italian producers. 

However, the FTA negotiations have faced significant opposition from Australian producers, particularly in the dairy sector, who argue that names like ASIAGO have become generic in Australia and should not be restricted to European producers. This pushback highlights the broader tension between the EU’s desire to protect traditional products and the reality of global markets, where such terms often evolve into generic descriptors. These producers don’t want to lose the ability to label their cheeses using names that consumers have come to recognise. 

In the absence of formal GI protections, the Consortium may turn to the Australian Consumer Law, using claims of misleading conduct or passing off to indirectly protect the name ASIAGO. Though not a guaranteed solution, it could offer a temporary measure to challenge improper use of the name. ACL prohibits businesses from engaging in conduct that misleads or deceives consumers, which could form the basis for challenging improper use of the name. However, success in this area would depend on proving that consumers associate ASIAGO with a specific origin and quality, despite the lack of formal GI recognition.

In terms of passing off, an extended passing off claim could potentially succeed if the Consortium can demonstrate that ASIAGO has acquired a strong reputation in Australia as a product linked to a specific geographic origin, even without GI protection. However, the challenge would lie in overcoming classical passing off hurdles, particularly given that ASIAGO may be seen as a more generic term in the Australian market. The burden of proving that the name isn’t merely descriptive, but rather indicative of a distinctive product, would be key to the claim’s success.

Another strategy is to embark on promotions and build consumer awareness around true ASIAGO cheese. For instance, the Consorzio Tutela Provolone Valpadana is undertaking a two-year long campaign (2024–2026) to promote consumer awareness about the Provolone Valpadana PDO. It proposes to use digital platforms and advertising campaigns to educate the wider Australian audience about the authenticity, quality, heritage and strict production standards of the cheese. A similar comprehensive marketing campaign could help educate Australians about the quality and origin of authentic Asiago, potentially laying the groundwork for future certification mark registrations. 

The Takeaway for Food GIs in Australia 

For those involved in the food and beverage sector in Australia, particularly with European GIs, the key takeaway is clear: securing GI protection in Australia is far from straightforward. Unless GIs are formally recognised or protected through certification marks, producers face an uphill battle. Building consumer recognition and using indirect legal mechanisms like the Australian Consumer Law may offer some level of protection, but true enforcement will likely depend on the outcome of international trade agreements like the EU-Australia FTA. Until then, the battle to protect traditional European names like Asiago in Australia continues."