Parmesan – The King of Cheeses
Only cheeses produced according to the rules
of the Production Regulation may bear the
distinctive Parmigiano Reggiano marks.
(Photo: Conzorzio del Formaggio
Known as the “King of Cheeses”, Parmesan, or Parmigiano Reggiano was first produced by Benedictine and Cistercian monks a thousand years ago. Over the centuries, it has acquired global prominence and is now a hugely popular choice for food-lovers the world over. While this popularity translates into a persistent and healthy demand, it has also resulted in parmesan becoming one of the most imitated agricultural products in the world. As consumers, how can we be sure that we have purchased “the real deal”? In this article, WIPO Magazine explores how the producers of Parmigiano Reggiano have acquired legal recognition that their cheese is the “one and only” Parmesan.
The method of producing this hard, grainy1 cheese, which is cooked and not pressed, has changed little over the centuries. Cheese-makers today use the same natural ingredients as their predecessors did (raw milk, rennet and salt) and employ “the same care and craftsmanship”. An iconic Italian food, Parmigiano Reggiano2 is produced in a well-defined area of northern Italy – the provinces of Parma, Reggio Emilia, and Modena and Bologna (on the left bank of the Reno River) and Mantova (on the right bank of the Po River). Many different factors determine the unique quality of Parmigiano Reggiano cheese – from the soils used to produce the fodder on which the cows graze to the skills used in the cheese-making process. Made from a mixture of full fat and skimmed milk, Parmesan is quickly digested and easily assimilated. Vaunted as “a miniature storehouse of concentrated” nourishment, it is rich in proteins, lipids, calcium and phosphorus and low in fat and cholesterol compared to other cheeses.
“The secret of the goodness originates in the place of origin, in the natural feed, and in the high quality milk with no additives.” (Conzorzio del Formaggio Parmigiano-Reggiano)
|An historical product|
|Literary references to Parmesan date back to the 14th century. Boccaccio’s 1348 work The Decameron relates "...and there was a whole mountain of Parmigiano cheese, all finely grated, on top of which stood people who were doing nothing but making macaroni and ravioli".
An entry by British Diarist, Samuel Pepys during the Great Fire of London in 1666 notes that he buried his “Parmezan cheese” to save it from the advancing fire.
The Conzorzio del Formaggio Parmigiano-Reggiano
In spite of its widespread renown, Parmesan production was relatively small until the early 1900s, when it expanded dramatically. Facing competition from cheaper imitation products, dairy farmers joined ranks to form the Conzorzio del Formaggio Parmigiano-Reggiano (the Consortium) in 1934. Since that time, the Consortium, which represents the interests of some 409 dairies in an area encompassing around 3,676 milk producers, has actively promoted consumer awareness of the uniqueness of Parmigiano Reggiano. It also plays a key role in upholding the product’s name and defending it against improper use.
So what legal measures has the Consortium taken to safeguard the name of Parmigiano Reggiano?
As Parmesan’s distinctiveness and qualities are closely linked to its place of origin and method of production, it qualifies for protection as a geographical indication (GI). Put simply, a GI is a sign used on goods which have a specific geographical origin and particular qualities or reputation arising from that place of origin.
The cheese is placed in a mould to give it
its final shape. (Photo: Conzorzio del
The Consortium’s quest to obtain international legal protection for Parmigiano Reggiano began in earnest in the 1950s, following the signature of an International Convention on the Use of Appellations of Origin and Denominations of Cheeses on June 1, 1951, in the Italian town of Stresa. Signatories of the Stresa Convention (France, Italy, the Netherlands, and Switzerland) “committed themselves to prohibiting the use of false designations of origin on their territory”. The Convention offered a higher level of protection for products considered appellations of origin (AO), such as Gorgonzola, Pecorino Romano, Roquefort and, of course, Parmigiano Reggiano. In October 1955, the Italian government issued Executive Order No. 1269 which states that only cheese produced in the Parmigiano Reggiano region and that complies with certain characteristics may be labeled as such.
The conclusion of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (“the Lisbon Agreement”) in 1958 marked another step forward in the Consortium’s pursuit of legal recognition.
The WIPO-administered Lisbon Agreement offers protection against any “usurpation or imitation, even if the origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as kind, type, make, imitation, or the like”3 through a single registration procedure. It also creates a presumption that an AO registered under the Lisbon System cannot become generic4 in other member countries and gives the AO holder legal standing to initiate judicial or administrative action5 in these countries where necessary. Parmigiano Reggiano was registered as an AO under the Lisbon Agreement on December 23, 1969.
International protection for GIs was further clarified following the conclusion of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) on April 15, 1994 (Articles 22 and 24). Broader Europe-wide recognition of Parmigiano Reggiano occurred in 1996 when it was among the first products to be classified as a protected designation of origin (PDO) under European law.6
|Elements of Parmigiano Reggiano’s PDO specification|
Among its many tasks, the Consortium is responsible for protecting, monitoring and safeguarding of Parmigiano Reggiano PDO and for ensuring “that no other product bears names, marks and/or other distinctive marks that could breach” the PDO or cause it damage or mislead consumers.
This task is made all the more difficult by an international legal landscape which, itself, offers a cheeseboard of options for protecting quality and authentic products associated with a specific origin. While GIs play a key role in “conveying to a consumer a product’s value added”, they are not defined, nor are they protected, in the same way everywhere.
In some jurisdictions, geographical terms are protected while in others they are considered generic product descriptions. Within Europe, this is a battle the Consortium has fought with some success. In 2008, the European Court of Justice7 dismissed the argument put forward by Germany that the term “parmesan” had become a generic name and concluded that it is an evocation of the PDO Parmigiano Reggiano”, something which is prohibited under European law. This same principle was recently upheld by a German Court in an appeal case involving a German food company. In June 2010, the court upheld a ruling that the company should stop making a product that mimicked Parmigiano Reggiano. Commenting on the verdict, the Consortium’s Director, Mr. Leo Bertozzi, said it “demonstrates that true protection is possible when working tenaciously and seriously.” He added, “this result reinforces our commitment to continue monitoring the market in the interests of consumers.”
The stenciling band bears the inscriptions
PARMIGIANO-REGGIANO, DOP CONSORZIO
TUTELA, the identification number of the
producing dairy, and the month and year of
production. (Photo: Conzorzio del Formaggio
In the many countries in which GIs are actively protected as a form of intellectual property, some provide a specific or sui generis system of GI laws and others opt to use their trademark systems8 (using collective or certification marks), laws against unfair competition, consumer protection laws, or specific laws or decrees that recognize individual GIs. This has important implications for an entity such as the Consortium insofar as efforts to defend the interests of their PDO need to be complemented by an effective trademark strategy.
In many ways, products with famous names like Parmigiano Reggiano are akin to top brands. As such, the Consortium’s trademark strategy is a key element in safeguarding the reputation of the Parmigiano Reggiano brand internationally. To this end the Consortium has registered a number of marks, for example, to distinguish pre-packaged (grated and portioned) Parmigiano Reggiano. Protection has been sought for these marks using WIPO’s Madrid System for the International Registration of Marks.
The challenge of navigating a complex and highly fragmented legal landscape is further compounded by the absence of a single common registry for all GIs. While the Lisbon Agreement could serve as a basis for such a global registry its ability to do so has, to date, been hampered by persistently low levels of membership. WIPO is currently working with the 27 contracting parties of the Agreement to explore ways to expand membership of the system – see box.
In spite of its increasing ability to tackle imitators of its iconic cheese, the Consortium continues to face challenges associated with the complexity of the legal landscape. In a recent case in Mexico, the Consortium pursued a companythat had unduly named its product Parmigiano Reggiano and “affixed on it identical or similar symbols or indications to those registered as collective marks by the Consorzio”, namely Parmigiano Reggiano (Reg. No. 650677) and Parmigiano Reggiano Consorzio Tutela (Reg. No. 638817), without authorization.
As such use presented a high risk of confusing consumers, the Consortium sought to obtain a preliminary injunction ordering the seizure of the infringing goods. An injunction was granted for the infringement of the Consortium’s collective trademarks registered in Mexico, but not for the infringement of the Parmigiano Reggiano AO. This was because Article 229 of the Mexican IP law required that the right holder (the Consortium in this case) should clearly indicate on the product’s packaging or wrapping (e.g. using the symbol ®) that it was protected by an industrial property right. The Mexican Supreme Court ruled that this provision only applies to patents and trademarks and not to AOs. It ruled, on the one hand, that IP rights, trademarks and AOs are separate and distinct in nature each bearing a different process of recognition. On the other hand, it ruled that the “adequate publicity” principle embodied in Article 229 was satisfied in respect of Parmigiano Reggiano by its registration in WIPO’s International (Lisbon) Register and by its publication in the WIPO Appellations of Origin bulletin. This supported the Consortium’s move to stop the company from commercializing its imitation parmesan in Mexico.
The Consortium continues to carefully navigate a complex international legal landscape. Against a backdrop of rising global demand for the cheese, it is working to raise consumer awareness about the unique qualities of genuine Parmesan. “This will help ensure that consumers make informed choices and are not duped into buying an imitation product which is often of lower quality, contains additives and is industrially produced,” noted Mr. Igino Moroni, the Consortium’s spokesman.
In today’s increasingly globalized and highly competitive marketplace, commercial success hinges on product differentiation. There is growing recognition among policymakers that GIs offer an opportunity for market-oriented rural development in countries that produce goods with unique physical and cultural attributes which have the potential to translate into distinctive products and, therefore, to become highly valuable commercial assets. Parmigiano Reggiano, for example, is a multi-million euro business that has supported the development of the region’s economy. The Consortium’s experience in defending the integrity of its producers’ cheese offers useful insights and lessons for those embarking on their own GI journey.
There are currently 10,000 protected GIs in the world with an estimated trade value of over US$50 billion9. Around 90 percent of these come from the 33 OECD10 countries.
Each cheese wheel is inspected by
Consortium experts (Photo: Conzorzio del
|Parmigiano Reggiano: Some facts|
|About the Lisbon Agreement|
The Lisbon Agreement was concluded in response to the specific need for an international system to facilitate international protection of a special category of GIs, namely, “appellations of origin” by means of their registration with WIPO through a single, simple and cost-effective procedure.
In many countries, goods bearing an appellation of origin represent a substantial share of exports. As economically important assets, it is important that such appellations are effectively protected against appropriation in the largest possible number of countries. The Lisbon system can help countries protect their national economic interest by facilitating the registration of these appellations in multiple countries.
The Working Group on the Development of the Lisbon System was established in 2008 to explore ways to expand the geographical scope and effectiveness of the Lisbon system. At its last meeting in Autumn 201011, the Working Group expressed broad support for:
The Working Group also requested that WIPO prepare draft provisions on a range of topics, including definitions, scope of protection, prior users, applications for trans-border AOs and GIs, and accession criteria for IGOs. It also called for WIPO to prepare a study on the possibility of dispute settlement within the Lisbon system.
1 The white crystals - composed of the aminoacid tyrosine - give the cheese its characteristic crunch and result from its maturing process.
2 Meaning literally “of Parma” and “of Reggio Emilia.”
3 Lisbon Agreement Article 3
4 Lisbon Agreement Article 6
5 Lisbon Agreement Article 8
6 By virtue of EC Regulation No. 510/2006 of 20 March 2006, as registered through Commission Regulation No. 1107/96 of 12 June 1996.
7 Case C-132/05 – European Commission vs Federal Republic of Germany
8 Guide to Geographical Indications – Linking Products and their Origins, ITC, 2009
10 OECD – Organisation for Economic Co-operation and Development
11 The second meeting of the Lisbon Working Group took place in Geneva from August 30 to September 3, 2010.