12 Jun 2022 Stéphane Bellec

Protection of PDO Gruyère and PGI by trademark law in the United States

The protection of protected designation of origine (PDO is often a source of complexity at the international level. The example of Gruyère cheese illustrates these difficulties perfectly. The French (defending the PGI Gruyère) and Swiss (defending the PDO Gruyère) unions are confronted with American protectionism. The intertwining of trademark law and the protection of PDOs and PGIs is once again highlighted.

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The protection of gruyere in the U.S.

In 2015, the French and Swiss unions decided to register the Gruyere brand in the United States. Trademark law was appropriate to privatize the name and prevent the circulation of American products that did not comply with the specifications of protected geographical indications (PGI).

Several American companies in the dairy industry objected to this trademark registration. The U.S. Office recognized the merits of the opposition: the GRUYERE mark consisted exclusively of generic and descriptive terms for the products. A summary judgment, a specific American procedure when the facts are “obvious”, was rendered following the appeal filed by the applicants on December 15, 2021. The judge found that the term GRUYÈRE had, in the past, been used to designate exclusively cheeses made in France and Switzerland. However, since that date, the importation and production of various cheeses under that name have made the designation generic.

The generic nature of Gruyère is assessed here with regard to the relevant public in the United States, which does not distinguish between the different types of Gruyère, between real Gruyère and that produced by American companies. For this public, the term gruyère is therefore a generic term to designate a type of cheese, without associating any particular know-how to it. This designation is therefore in the public domain, no privatization is possible.

The French and Swiss unions have appealed this decision.

Defending PDOs and PGIs internationally

The American dairy exporters’ lawyer welcomed this decision, in line with the interests and liberalization of food names.

Beyond this decision, the protection of PDOs and PGIs internationally remains difficult. It comes up against the will of protectionism and the defense of local producers. Such decisions weaken the reputation of PDOs and PGIs internationally.

The term Gruyère has existed since the 17th century in Switzerland and corresponds to a specific know-how, argue the defenders of the PDO and PGI.

Stéphane Bellec avocat propriété intellectuelle