Appeal decision report (GORGONZOLA)
October 2, 2020
|Appeal number||Rejection 2019-11566（JP. Appl. No. 2015-83112）|
|Case summary||A case in which a trademark consisting of “GORGONZOLA” in Latin characters was approved for registration as a collective trademark for “cheese” in class 29.|
|Date of decision||June 1, 2020|
|Demandant (Applicant)||Consorzio per la Tutela del Formaggio Gorgonzola|
GORGONZOLA (standard characters)
|Designated Goods and Class(es)||Cheese produced in the province of Bergamo, Biella, etc. in Italy.”|
The trademark of the present application consists of “GORGONZOLA,” which is “Gorgonzola (cheese). Semi-hard Italian blue cheese with a strong scent (Random House English-Japanese Dictionary 2nd Edition). It should be recognized as the name of a certain Italian blue cheese, and hard to say that it is recognized as representing a specific place name or area.
In addition, the applicant is an organization to which all producers of Gorgonzola cheese are affiliated and manage the display of the name of origin, and GORGONZOLA is certified as the name of origin (DOP) and PDO (protection of the name of origin). It has been publicized and used to indicate quality cheeses from Italy even in Japan.
Based on the above facts, the word “GORGONZOLA” is used and recognized as a brand of cheese that is produced in the designated place in Italy and has passed the appraisal by the applicant.
The appeal board concluded that the applied-for-mark functions as identification for the source of origin.
In the examination stage, the examiner found that the word “GORGONZOLA” only makes people recognize some type of blue cheese made in Gorgonzola village, Lombardy, Italy, and merely indicates the place and quality of the product in a common manner.
Since the Trademark consists only of place names, it does not fall under the regional collective trademark, and it was judged that it merely indicates the place of origin or the type of blue cheese.
In the trial decision, the word “GORGONZOLA” is not recognized as a place name. Moreover, it is certified as DOP and PDO. The applicant is the cooperative to which all producers of Gorgonzola cheese are affiliated. Thus, it functions as a source indicator.
Since the Trademark is certified as DOP and PDO in Europe, it is used only for products with the specified quality by members of an organization of a specific place of origin, and as long as the organization to which all producers belong is the trademark owner, it cannot be said that it is not appropriate for the public interest to allow its exclusive use (Intellectual Property High Court Judgment / 2009 (Gyo-ke) No. 10226 “SIDAMO” case).
In this case, the geographical indication (GI) consisting only of the place name is registered for a trademark as being recognized as a brand because the place name is not well known as a production area in Japan.
There is a precedent case that Article 3, Paragraph 1, Item 3 is not applicable because it is not recognized as a place of origin in Rejection 2012-18364 for “Parmigiano Reggiano.”