Italy: The Emmental affair: the protection of "Emmental" or "Emmentaler" as a designation of origin

02 July 2015

Linda Brugioni

On June 9, 2015, the Court of Milan issued a decision in favour of Emmentaler Switzerland (the Consortium aimed at the surveillance of the production of the well-known homonymous cheese "The Consortium"), preventing the Swiss cheese producer, Wick Kase Gmbh ("Wick"), and its Italian distributors, from using the sign "Emmental", "Emmentaler" and/or "Emmental/Emmentaler Svizzero" (i.e. "Swiss Emmental/Emmentaler") for cheese not complying with the specifications and characteristics of the original "Emmental".

By a way of background, the case commenced with judicial inspection proceedings (descrizione giudiziale) requested on an urgent basis by the Consortium against Wick's Italian distributors to enable a search of their premises for cheese bearing the sign "Emmental" and suspected of not complying with the original Emmental specifications. In particular, the Consortium asked the Court to authorize the health authority to perform tests on the seized cheese in order to ascertain the presence of lysozyme (which should not be present in the original Emmental).

Further to the urgent proceedings, the Consortium filed proceedings on the merits claiming violation by Wick (and the relevant distributors) of the designation of origin "Emmental / Emmentaler", infringement of the corresponding unregistered collective trademark and registered community trademarks, and seeking remedies including an injunction and damages.

In particular, the Consortium enforced the designation of origin "Emmental / Emmentaler" claiming protection as "appelations d'origine" under the 1951 Stresa Convention.

Wick's main line of defence was based on the assertion that "Emmental" has become a generic term. As a matter of fact, Wick argued that the name could no longer be considered as connected  to a specific geographical area (i.e. a part of the Bernese area in Switzerland). According to Wick, the Stresa Convention would support this argument since "Emmental" could be used under the Convention for cheeses also produced outside of Switzerland (subject to the name of the country of production being indicated).

With reference to the protection as "appelations d'origine", the Court affirmed that the Convention of Stresa does grant protection to "Emmental". The use of said designation is allowed as long as the cheese is produced in compliance with the relevant specifications; in the event production according to the specifications is performed outside Switzerland, the name of the country of production should also be provided (e.g. "French Emmental"), without implying any generic nature of the designation.

In this case, Wick's cheese bore the signs "Emmental" or "Emmentaler" together with the wording "Svizzero" (i.e. Swiss) or "l'originale" (i.e. the original).

However, the presence of lysozyme, as ascertained during the urgent preliminary proceedings, meant that Wick's cheese could not be considered as original Emmental.

In this respect, the Court considered the "appellation d'origine" as violated under the Stresa Convention and under Article 29 and 30 of the Italian IP Code (i.e. the domestic law providing protection for geographical indications and designations of origin).

Wick's conduct was also held to amount to unfair competition and violation of the Consortium trademark rights, especially with reference to the unregistered collective trademarks rights including "Emmental", "Emmentaler", "Emmental/Emmentaler Switzerland".

Interestingly, the Court granted protection to the latter collective trademark rights because of the extensive evidence filed as to the reputation of the trademarks and the awareness of the consumers about the strict quality controls required for cheese bearing the sign "Emmental" or "Emmentaler".

Finally, the Court ordered the defendants to pay to the Consortium, as the entity representing the interests of its affiliates, quite generous compensation in damages.

Both patrimonial damages (calculated by reference to the association fees which should have been paid to the Consortium) and non-patrimonial damages were awarded, resulting in a total amount of more than €1,500,000.

This decision represents a success story for the protection of designations of origin and highlights how trademark law can play an important role in that protection.