A pub landlord in the village of Stilton in the UK has been forced to rename the cheese that he sold as ‘Stilton’.
The Stilton Cheesemakers’ Association (SCMA) – who, in spite of the name, have no connection with the village – had registered ownership of the name ‘Stilton’. This gave them the right to make the unsuspecting publican stop using it as a brand name for his cheese.
This may come as a surprise to many, as the cheese was being sold in the village of Stilton. However, the SCMA are the proprietors of a certification trade mark for Stilton dating back to 1966 and a Protected Designation of Origin (‘PDO’), obtained from the European Commission in 1986. As a result, ‘Stilton’ may only be used for cheese products that originate from Derbyshire, Leicestershire or Nottinghamshire.
In response to pressure for the SCMA, the publican opted to rename his cheese ‘Bell Blue’. Interestingly, he can still describe the cheese as ‘blue-veined cheese made in Stilton’ on the packaging.
The story underlines how important it can be for food and drink brand owners to take extra care when deciding how to name products that are commonly associated with a certain region.
PDOs and certification trade marks are granted for foodstuffs and beverages produced in a given geographical area using recognised know-how. A certification trade mark is a right granted by the UK Intellectual Property Office and is enforceable only in the UK.
A PDO is granted by the European Commission and can be enforced throughout the European Union. The rationale is to provide consumers with a guarantee that goods bearing the protected mark have a particular characteristic. Consequently, the owner of such rights can prevent others from using the name on products that are not produced in accordance with the specification governed by the PDO or certification trade mark.
Taking the Stilton example, cheeses bearing the name ‘Stilton’ must be made in Derbyshire, Leicestershire or Nottinghamshire and produced by traditional means. The guarantee is that the cheese originates from one of these three counties. Cheese produced outside these areas must not be marketed as ‘Stilton’ and this is why the SCMA were able to prevent the publican in Stilton village (which isn’t in one of the three specified counties) from branding his cheese as ‘Stilton’.
PDOs and certification trade marks are a specialised form of trade mark protection. They confer rights that go beyond the general rights enjoyed by trade mark owners. Applications for this form of protection are usually from associations who want to ensure that high standards are maintained for names associated with certain well-known products. They may, for example, wish to guarantee that a unique type of meat is sourced only from a specified breed of pig.
Applicants must give the UK Intellectual Property Office or the European Commission (depending on which right is sought) a specification of the product and describe the link between the product and the geographical area of origin. The application is then examined to assess whether the specified product is capable of protection as a PDO or a certification trade mark and whether the application is justified.
Generic names such as Dijon mustard and common types of animal breed are incapable of achieving this specialised form of trade mark protection.
The Stilton dispute is a clear example of the effects PDOs and certification trade marks can have in the marketplace. Anyone planning a new food or drink brand must take account of these rights when considering their branding strategy.
Infringing others’ rights conferred by these forms of trade mark protection can be expensive, but anybody planning to market a product that follows a specific or exclusive process or practice that is unique to a certain area ought to consider applying for a PDO or certification trade mark.
Tania Clarke is a Registered Trade Mark Attorney and a qualified Barrister. She chairs the editorial board of the Institute of Trade Mark Attorneys and is a partner at IP law firm Withers & Rogers, where she specialises in multinational trade mark management for clients in several sectors, including prepared foods.
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