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The Curious Case of Roquefort and Champagne: Geographic Indications and the Law in England and the United States

by Derek Lee | Summer 2017

The legal defense of two of France’s most prolific food exports, Roquefort Cheese and Champagne, identifies a difference in law for geographic indications in the United States and England. While many companies are protected from indications domestically, the legal hoops they must jump abroad are many. An evaluation of the cases of the Community of Roquefort and Champagne in this article sheds light on the process by which Italian companies are seeking to protect their brand in United States and English markets today.

1. “Frequently Asked Questions: Geographical Indications.” World Intellectual Property Organization, Accessed 21 July 2017, http://www.wipo.int/geo_indications/en/faq_geographicalindications.html.

2. Community of Roquefort v. William Faehndrich, Inc., 198 F. Supp. 291 (S.D.N.Y. 1961)

6. “Uruguay Round Agreement: TRIPS. Part II – Standards concerning the availability, scope and use of Intellectual Property Rights.” World Trade Organization, https://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm.

7. Lilian B. Faulhaber, “Cured Meat and Idaho Potatoes: A Comparative Analysis of European and American Protection and Enforcement of Geographic Indications of Foodstuffs” (2005) 11 Columbia Journal of European Law 623.

8. “Frequently Asked Questions: Geographical Indications.” World Intellectual Property Organization, http://www.wipo.int/geo_indications/en/faq_geographicalindications.html. Accessed 21 July 2017.

9. “Made in Italy: How to Protect Authenticity. Interview with Donatella Iaricci, Head of the Intellectual Property Rights Desk.” i-Italy, http://www.iitaly.org/magazine/dining-in-out/articles-reviews/article/made-in-italy-how-protect-authenticity-interview. Last accessed: 26 July 2017.

Roquefort cheese and Champagne can be counted amongst France’s most prized exports. Known internationally for their distinctive taste and high quality, these two products have acquired a strong reputation over time that their producers have sought to protect from imitation through both French and international law. Geographical indications are the main instrument through which they have sought to prevent free-riders from profiting from the good reputation of their products. These are defined as signs used on products that have a specific geographical origin and possess qualities and reputation that are essentially due to their place of origin.[1] The fundamental premise of geographical indications is that the quality of the good is inextricably linked to the place where it was produced; for Roquefort cheese, this is the town of Roquefort-sur-Soulzon in the Occitanie administrative region of France, whereas for Champagne it is the historical province of Champagne, which is nowadays contained predominantly within France’s Champagne-Ardenne administrative region. Although French law contains strong provisions protecting the geographical indications of both Roquefort cheese and Champagne, this is not necessarily the case with the law of other municipalities. Indeed, the law governing geographical indications is different in every country, leading to producers from communities such as Roquefort-sur-Soulzon and Champagne to join efforts in order to register their products pursuant to the different legal regimes of the markets where they seek to export their goods. Likewise, these communities have been proactive in pursuing a range of legal recourses against competitors who claim to sell Roquefort cheese or Champagne produced outside of the defined region of origin for these products.

This article will examine two landmark cases from 1960 and 1961 related to the protection of the Roquefort and Champagne geographical indications (Community of Roquefort v. William Faehndrich, Inc. and J. Bollinger and Others v. Costa Brava Wine Company Ltd.), one from the United States and one from England, and it will then compare the different approaches to the protection of geographical indications in these two jurisdictions, focusing both on cultural differences and on the unique characteristics of their legal regimes. Finally, the article will consider post-1961 developments in international law regarding geographical indication laws, and consider the current panorama for the subject with a focus on the recent “Italian sounding” food phenomenon that the Italian government is actively fighting in courtrooms around the world.

COMMUNITY OF ROQUEFORT V. WILLIAM FACHNDRICH, INC.

In 1960, the American company William Faehndrich, Inc. imported to the United States a shipment of sheep’s milk blue-mold cheese produced in Hungary and Italy. When the cheese entered the country, the various containers were appropriately labeled as originating in those two countries. Nonetheless, when the company began to market it in the United States, they removed the labels indicating the Hungarian or Italian origin of the cheese, instead replacing them with labels reading “Imported Roquefort Cheese” and “Made from Pure Sheep’s Milk Only”, thus failing to appropriately indicate the country of origin of the cheese. As a result, the Community of Roquefort (the legal name used by the local government of Roquefort-sur-Soulzon) filed a lawsuit against William Faehndrich, Inc. in the United States District Court for the Southern District of New York. In the lawsuit, the plaintiffs (Community of Roquefort) made the following four claims:

 

  1. Infringement of the registered certification of the word “Roquefort” on cheese, as per § 44 of the Lanham Act;

  2. Violation of an international treaty (the 1883 International Convention for the Protection of Industrial Property);

  3. Acts of unfair competition;

  4. A false and misleading designation of origin and description, as per § 43 of the Lanham Act.[2]

 

The plaintiffs noted in their brief that, if the court made a summary judgement (i.e. judgement as a matter of law, or without a full trial) on the first claim (infringement of the registered certification), then they would proceed to withdraw the other three claims. The reason for this is that a summary judgement on the first claim would suffice to stop the defendant (William Faehndrich, Inc.) from continuing to market Hungarian and Italian cheese as Roquefort. This was indeed what happened, since the judge found the defendants to have violated § 44 of the Lanham Act by infringing on the registered certification of the word “Roquefort” on cheese. This act, which became law in 1946, is the primary federal trademark statute of law in the United States, and it is one of the fifty-three titles of the United States Code. The Lanham Act contains a provision that allows trade associations and non-profit organizations to offer “certification marks” stating that a product meets specific criteria of production and quality, among other factors.[3] When a product’s good reputation is tied to its place of production (i.e. the requisites for a geographical indication), then the private trade organization or the government of the locality can proceed to register a certification mark with the United States Patent and Trademark Office. This was precisely what the Community of Roquefort did on March 10, 1953, when the certification mark “Roquefort” for cheese was entered into the principal trademark register of the United States. Consequently, when the defendant attempted to sell Hungarian and Italian cheese in the United States with the label “Imported Roquefort Cheese,” this was a clear and blatant infringement of the certification mark owned by the Community of Roquefort, and thus of the Lanham Act. Consequently, the judge granted the plaintiff’s motion for summary judgement and the case did not go to trial.

J. BOLLINGER AND OTHERS V. COSTA BRAVA WINE COMPANY LTD.

In the late 1950s, Costa Brava Wine Company Ltd. began to import into the United Kingdom a sparkling white wine produced in the Costa Brava region of Spain, which it labelled “Spanish Champagne”. Soon enough, the 46 Champagne houses from the historical Champagne region of France voted to select 12 of these houses (J. Bollinger being the first one, alphabetically) in order to launch a “passing off” tort and request an injunction against Costa Brava Wine Company Ltd. The plaintiffs (J. Bollinger and Others) argued that the use of the epithet “Spanish” did not go far enough in differentiating between their product and genuine Champagne from France. The judge concurred, noting that epithets are often overlooked by people, and accepting the plaintiff’s claims that a significant number of people in the United Kingdom were unaware that Champagne can only be produced in France, and thus could be misled to think that “Spanish Champagne” was genuine Champagne. Although the defendant (Costa Brava Wine Company Ltd.) provided various examples of regional epithets being used in the past next to the word ‘Champagne’, the judge dismissed them as “temporary irrelevancies or, perhaps, passing attempts to popularize the name Champagne.” In addition, the judge went as far as to conclude that the defendant sought to “deliberately… acquire sales through the reputations of the world-famous and true Champagne.”[4] As a result, the judge proceeded to rule in favor of the plaintiffs, granting the defendant a forty-eight-hour grace period to relabel their bottles.

This case revolved around the plaintiff’s allegation that the defendant was “passing off” their product, which is a common-law tort. The tort of “passing off” arose in the nineteenth century with the purpose of providing a legal recourse to traders whose brand was being misrepresented or imitated by another trader, to the detriment of their reputation. Previous to the emergence of the “passing off” tort, cases of this type were sued on the basis of the torts of deceit or defamation. In order for the plaintiff to win the case and secure an injunction against the defendant (as the Champagne houses did in this case), three facts must be proven:

 

  1. The plaintiff’s goods, name, or mark possess a reputation that allows the public to distinguish them from others;

  2. The defendant has misrepresented their goods in order to lead the public to believe that their goods are actually those of the claimant;

  3. This misrepresentation has caused damage to the plaintiff’s reputation. [5]

 

In the majority of cases, the first fact is the most difficult one to prove, since defendants can argue that the name or brand with which they are selling their goods is a generic one, as opposed to one referring to a specific company or region. In the case of the Champagne case, the defendant would have had to prove that Champagne is a generic term for sparking white wine, rather than a specific term that refers to wine produced in the historical region of Champagne. Nonetheless, the defendant in the case did not contest this, instead recognizing that the houses of Champagne have acquired a reputation through the years that distinguishes them from other products in the eyes of the public. Instead, the defendants chose to contest the tort based on the second fact, claiming that the addition of the epithet “Spanish” was sufficient in allowing consumers to realize that their product was not actual Champagne from France, but rather a Champagne-style wine from Spain. The plaintiffs countered this by bringing a series of witnesses to the stand who gave evidence of how a significant portion of the British public is unaware that Champagne can only be a French wine. Ultimately, they were successful in proving this, leading the judge to conclude that all three facts had been satisfactorily demonstrated and thus finding the defendant guilty of “passing off” their wine for Champagne.

COMPARING THE ROQUEFORT AND CHAMPAGNE CASES

There are a number of crucial differences between the Roquefort and Champagne cases, an examination of which reveals the fundamental differences in how American and English law approach the protection of geographic indications. The first difference lies in the fact that the Roquefort case was solved through a summary judgement because the law regarding geographical indications and certification marks was very clearly codified in the United States Code thanks to the 1946 Lanham Act. The Act created the possibility for organizations such as the Community of Roquefort to register their certification mark, and the fact that Roquefort had done this in 1953 meant that, when they sued William Faehndrich, Inc., in 1961, the case did not even have to go trial, for the law clearly established that Roquefort’s certification mark was fully recognized in the United States and deserving of the full protection that a trademark would be entitled to (even though certification marks and trademarks are different categories). On the other hand, the Champagne case in England could not be resolved through summary judgement since the law regarding “passing off” in England and Wales is not governed by any specific legislation or code, and thus must be adjudicated in a court of law using case law. This means that the plaintiffs (J. Bollinger and Others) had to call a large number of witnesses to the court in order to show that the defendant (Costa Brava Wine Company Ltd.) had indeed attempted to “pass off” their wine for Champagne.

If this case had taken place in the United States (and assuming that the Champagne houses had previously registered their certification mark) then there would have been no need for the plaintiffs to prove in court that the three facts delineated in the previous section. Indeed, it would have sufficed for them to show that the defendants were advertising their product using a certification mark whose conditions they did not meet (since the wine was produced in Spain, rather than the Champagne historical region). Consequently, it appears that American legislation offered in 1960 a more efficient and expedient protection of geographical indication for organizations of various types (such as the Community of Roquefort) than English law did. Indeed, the codified nature of American law on this matter allowed for the registration of certification marks and for summary judgements when these were infringed, thus accelerating the process through which falsely-advertised products could be removed from the market (or relabeled). Although the United Kingdom’s accession to the European Union in 1973 means that it must follow the current European regime for the protection of geographical indications (which is very strict and includes a wide range of drinks and agricultural products), its impending “Brexit” casts doubt over whether these protections will remain in place. Indeed, at the least during the transition period when the law remains uncertain, the continued existence of the tort of “passing off” might come in rather handy for groups such as the Community of Roquefort seeking to protect their unique identity. 

GEOGRAPHICAL INDICATIONS TODAY

Ever since these two cases were tried in the decade of 1960, there have been important developments in how international law deals with geographical indications. One of these is the TRIPS agreement signed in 1995, which stands for Agreement on Trade-Related Aspects of Intellectual Property Rights. This agreement was negotiated during the 1994 Uruguay Round of the General Agreement on Trade and Tariffs (GATT), and it continues to be administered by the World Trade Organization (WTO), with all member states of the organization being required to sign and ratify TRIPS. Article 22 of the agreement provides the framework for the protection of geographical indications, defining them as “indications which identify a good as originating in the territory of a member or region or locality in that territory where a given quality, reputation or other characteristic of the good is essentially attributable to its origin.”[6] Nonetheless, the protections included in TRIPS are overwhelmingly focused on wine and spirits (particularly Article 23, which offers them greater protections), rather than on other agricultural products. Thus, whereas TRIPS would be a useful mechanism for the Champagne houses to prevent companies from outside the region from passing off their wine as a type of Champagne, this would not be the case for the Community of Roquefort, which even nowadays continues to rely on the protections available according to the local law of the various countries where the cheese is merchandised.[7] In the recent Doha Round of trade negotiations, the European Union’s negotiators pushed for the inclusion of other agricultural products into the umbrella of goods that have access to the extended protections in Article 23 of TRIPS, but the stagnation of the talks prevented this from being implemented. As a result, the Community of Roquefort (and similar organizations) must continue to monitor the legal protections available in various markets in order to protect their Roquefort brand through a complex web of certifications or “passing off” torts in the courts.

The collapse of the Doha Round and the continuing lack of an international agreement on geographical indications is particularly damaging to the Italian economy. Although the two cases examined in this article revolve around French products from the decade of 1960, the main “food piracy” legal battle being fought in the twenty-first century is that of the Italian government versus producers of “Italian sounding” goods around the world, particularly in North America. These are goods that are not produced in Italy, yet are misleadingly labelled as having an “Italian recipe” or “Italian style” which mislead consumers into thinking that they were made in Italy and thus enjoy the high quality associated with the country’s food industry. This costs money to Italian producers in two ways: first, because it takes away market share for Italian products from them; second, because it damages the reputation of their products since consumers come to associate lower-quality non-Italian imitations with genuine Italian products, and thus they are no longer willing to pay a prime for the latter despite its higher quality. The assumption here, of course, is that all Italian products are of an inherently higher quality than their North American imitations—a claim that non-Italian producers have contested incessantly. Indeed, an organization is permitted to register a geographical indication when the special quality of the product is deemed to “essentially due to its place of origin” (emphasis added).[8] Indeed, although it has been deemed reasonable to claim that the high quality of Champagne relates specifically to the conditions of the soil and climate in the historical Champagne region in combination with the artisan methods of production employed there, it is indeed a stretch to claim that all French products are of a high quality by virtue of having been produced in France—particularly given the wide range of soil types, climatic conditions, and production methods used across the entirety of the French Republic; the same has held true in the courts for its Italian neighbor. Consequently, there has been resistance to the idea of Italian products being registered as possessing country-wide geographical indications, and instead the Italian government and trade groups have pursued lawsuits in the United States and Canada on grounds such as misleading advertising or a failure to properly indicate the product’s country of origin. To do this, Italy’s Ministry of Economic Development has partnered with a network of Italian embassies around the world to establish eleven “Intellectual Property Rights Desks” who provide legal assistance on American intellectual property laws to Italian companies, and who initiate action against companies who market “Italian sounding” goods. According to Donatella Iaricci, the head of the New York desk, the main plan for tackling the phenomenon is to secure the extension of the protections accorded to wines in Article 23 of TRIPS to other agricultural products through a bilateral agreement between the European Union and the United States (as a substitute for the TRIPS-wide addition that could not be secured in the Doha Round).[9] If this can indeed be achieved, then the Community of Roquefort will certainly be happy to join the Champagne houses in receiving the same level of protection for their geographical indication. Nonetheless, this remains highly tentative, and, for the time being, European exporters from various localities will have to continue relying on certification marks specific to each region and/or product.

REFERENCES

 

[1] “Frequently Asked Questions: Geographical Indications.” World Intellectual Property Organization, Accessed 21 July 2017, http://www.wipo.int/geo_indications/en/faq_geographicalindications.html.

[2] Community of Roquefort v. William Faehndrich, Inc., 198 F. Supp. 291 (S.D.N.Y. 1961)

[3] “World-wide Certification-Mark Registration: A Certifiable Nightmare.” Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=a1905c59-1aeb-41df-b295-050bf5ba0a60. Last accessed 23 July 2017.

[4] Bollinger, J., and Others v. Costa Brava Wine Company Ltd., RPC 1960; 77 (1): 16-34. doi: 10.1093/rpc/77.1.16

[5] “Passing Off.” In Brief, http://www.inbrief.co.uk/intellectual-property/passing-off/). Last accessed: 25 July 2017.

[6] “Uruguay Round Agreement: TRIPS. Part II – Standards concerning the availability, scope and use of Intellectual Property Rights.” World Trade Organization, https://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm.

[7] Lilian B. Faulhaber, “Cured Meat and Idaho Potatoes: A Comparative Analysis of European and American Protection and Enforcement of Geographic Indications of Foodstuffs” (2005) 11 Columbia Journal of European Law 623.

[8] “Frequently Asked Questions: Geographical Indications.” World Intellectual Property Organization, http://www.wipo.int/geo_indications/en/faq_geographicalindications.html. Accessed 21 July 2017.

[9] “Made in Italy: How to Protect Authenticity. Interview with Donatella Iaricci, Head of the Intellectual Property Rights Desk.” i-Italy, http://www.iitaly.org/magazine/dining-in-out/articles-reviews/article/made-in-italy-how-protect-authenticity-interview. Last accessed: 26 July 2017.

3. “World-wide Certification-Mark Registration: A Certifiable Nightmare.” Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=a1905c59-1aeb-41df-b295-050bf5ba0a60. Last accessed 23 July 2017.

4. Bollinger, J., and Others v. Costa Brava Wine Company Ltd., RPC 1960; 77 (1): 16-34. doi: 10.1093/rpc/77.1.16

5. “Passing Off.” In Brief, http://www.inbrief.co.uk/intellectual-property/passing-off/). Last accessed: 25 July 2017.