PARMIGIANO REGGIANO WINS IN ECUADOR, REGISTRATION OF THE “KRAFT PARMESAN CHEESE” TRADEMARK BLOCKED

According to the local office of intellectual property rights, the American multinational "takes unfair advantage of the reputation, quality and other characteristics of the PDO due exclusively to the environment in which it is produced.” Important victory for Geographical Indications in the American continent.

The attempt by the Kraft Food Group Brands LLC to register the “KRAFT PARMESAN CHEESE” trademark in Ecuador did not succeed. The competent office in Ecuador, after receiving the formal opposition of the Parmigiano Reggiano Cheese Consortium, responsible for the protection of the PDO throughout the world, ruled that the request of the American multinational cannot be accepted as the trademark "since it presents significant similarities to the protected designation of origin, unfairly taking advantage of the latter's reputation, quality and other characteristics that are owed exclusively to the geographical environment in which it is produced.”

The decision is an important victory for the system of Geographical Indications in the American continent, because it reaffirms the fundamental importance of the link between product, geographical area and Designation of Origin. The decision of the Ecuadorian Office has demonstrated, as a matter of law, that the name Parmesan is not necessarily generic outside the European Union, as many multinationals and trade associations would like. This is a milestone on which to build a broader strategy at an international level, one which will benefit not only the Parmigiano Reggiano PDO but all Geographical Indications.

The text points out that "Kraft Foods Group Brands, LLC., is a company domiciled in the United States of America, a place that does not have any relationship with Italy, much less with the origin of the cheese Parmigiano Reggiano (territory of the provinces of Parma, Reggio Emilia Modena and the neighbouring municipalities of the provinces of Mantua and Bologna).”

In addition to the legal aspects, the battle against the generic nature of the name Parmesan that the Consortium fights all over the world, with quite significant financial commitments, in synergy with oriGIn - the organization that gathers together Geographical Indications at an international level - has extremely practical implications for people and their day-to-day habits. The term Parmesan evokes the designation of origin Parmigiano Reggiano and, in countries where there is no protection, the average consumer can be easily deceived and encouraged to buy a product that seems Italian but that in reality has nothing to do with Italy. This thesis is also confirmed by the Ecuadorian authorities: “it is clear that the requested mark could be deceptive and affect consumers, who would not be able to make an informed decision on the market.”

Parmigiano Reggiano has such strong links to its area of origin that it would be impossible to reproduce it anywhere else, even using the same production techniques.

In 2008, the European Court of Justice ruled that only Parmigiano Reggiano cheese PDO can be sold under the name "Parmesan" in the European Union. Therefore, the use of the term "Parmesan" to designate hard and grated cheeses that do not comply with the production specifications of the Protected Designation of Origin (PDO) Parmigiano Reggiano is a violation of the latter in the EU. The Court’s ruling was also a victory for consumers, who have thus obtained a strong guarantee of traceability and will be protected by misleading designations in the market.

Unfortunately, the regulations protecting the name Parmigiano Reggiano in the European Union do not apply in all countries in the world, opening the door to incorrect uses of the name for cheeses produced in the United States and in other countries. The Consortium estimates that the turnover of fake Parmesan outside the European Union amounts to 2 billion euros, about 200,000 tonnes of products, that is, 15 times the volume of exported Parmigiano Reggiano.

However, the decision of the Ecuador Office confirms the importance of the Free Trade Agreement concluded by the European Union with Colombia, Peru and Ecuador, which has made it possible to recognize the protection of the Parmigiano Reggiano PDO in the Andean countries.

“The international fight against the illegitimate use of the term ‘Parmesan’ continues; - commented the President of the Consortium Nicola Bertinelli - after a legal battle lasting almost three years against the multinational Kraft Foods Group Brands LLC, we have succeeded in preventing the registration ‘KRAFT PARMESAN CHEESE’ as a business trademark in Ecuador. This action was brought in the interest of Italian producers but also of Ecuadorian consumers, who will no longer run the risk of being misled at the time of purchase. Should the multinational challenge the decision, the Consortium will naturally continue defending the PDO and local consumers.”

“oriGIn welcomes the decision of the Intellectual Property Office of Ecuador. With the refusal of the trademark ‘KRAFT PARMESAN CHEESE’, the Office confirms that exceptions to the rights conferred by Geographical Indications – like the ones to any internationally recognised intellectual property right – must be evaluated by countries individually, with respect to their own jurisdictions. In other words, a hypothetical concept of common food names that have acquired a generic nature internationally, without the need for the claimant to provide substantiated proofs, does not exist in legal terms. Likewise, the decision of the Intellectual Property Office of Ecuador shows that the robust protection of Geographical Indications against any subtle attempt to unduly benefit from their reputation is becoming an international standard”, said Massimo Vittori, Managing Director of oriGIn.