Safeguarding Common Names in Key Markets Around the World
September 4th, 2019
As anticipated, 2019 continues to be a busy year for CCFN in defense and education in the area of generic names. CCFN has filed 13 new opposition this year to preserve common names, most which are still pending. Here are some details on work conducted so far this year.
In the United States:
- Gruyere: The oral hearing within the U.S. Patent and Trademark Office (USPTO) to consider the Swiss application for a “gruyere” trademark took place in June; a decision is expected by late September. CCFN has led the work to oppose this trademark over the past three years, given widespread use within the Unites States of the common name and precedent concerns related to its approval.
- We also recently engaged with Congress and the Administration in relation to House and Senate hearings that included the topic of GIs. In those hearings, U.S. Trade Representative Robert Lighthizer touted the GI elements within the U.S.-Mexico-Canada Agreement (USMCA). CCFN staff also met with Senate Finance Trade Committee offices and committee staff, as well as House Agriculture Committee staff to discuss the need for greater Congressional focus on GIs, including through the pursuit of a hearing.
- CCFN filed comments regarding China’s GI Foreign Product Protection Measure to stress that China must safeguard common names as new GIs are registered. We also filed supplementary arguments in ongoing efforts to oppose trademarks that would include “cheddar” and “emmental”, as well as oppositions against two trademark applications that would impact the use of the term “bologna”. In addition, CCFN replied to an invitation by the Chinese government to engage in mediations with the EU regarding several pending EU GI applications, but the EU has rejected China’s proposal for mediation.
- In Vietnam, as a result of CCFN’s work in challenging local trademark applications, disclaimers were included in the filing so that the generic terms “cheddar” and “mozzarella” will not be monopolized.
- In Taiwan-Hong Kong: CCFN worked through the International Trademark Association (INTA) to submit comments to inform the dialogue regarding GIs in a Taiwan-Hong Kong free trade agreement with EU.
In Latin America CCFN is conducting ongoing legal efforts to safeguard such terms as parmesan, cheddar, edam, asiago and gorgonzola by opposing overly broad trademark applications, as well as Italian industry groups and EU efforts to confiscate terms through a nation’s trademark system. For example:
- In Argentina CCFN safeguarded the term “edam” this year by opposing a trademark application filed by a local company.
- In Brazil, CCFN is monitoring a trademark application from a local company to ensure there is no threat to the generic name “cheddar”.
- In Mexico, the nine constitutional challenges (“amparos”) that CCFN filed in last 2018 regarding the Mexican Ministry of Economy’s lack of due process for certain GIs have been advancing. To date only one amparo has been rejected by the court. The process is ongoing and CCFN is awaiting final decisions on the resolutions.
Similarly, in Australia, New Zealand, Russia and South Africa so far this year:
- CCFN worked to safeguard asiago, gorgonzola, provolone, parmesan, mozzarella, cheddar, feta and other generic cheese names by filing oppositions to trademark applications, collaborating on submissions as part of that nation’s trade negotiations with the EU, or requesting disclaimers to trademark applications so that the generic terms are preserved.