Toblerone has recently announced that with some of its production moving to Slovakia, its famous Matterhorn imagery will no longer feature on its packaging. Across the pond, a US appeals court has ruled that “gruyere” can be used to label cheeses that come from outside the Gruyère region of Switzerland and France.
Such issues have become familiar to some New Zealand food and beverage producers in recent years. We take a further look at what the latest developments may mean for New Zealand producers.
Matterhorn no more
The famous Swiss chocolate brand Toblerone was first launched in 1908 in Bern, Switzerland, featuring mountain-shaped Swiss milk chocolate, honey and almond nougat. The Matterhorn’s stylised silhouette debuted on the product in 1970 and has become synonymous with the brand ever since.
From the end of 2023, some of Toblerone’s production will be moved to Slovakia. This means the triangular chocolate will now fall foul of Switzerland’s 2017 “Swissness” legislation. As a result, Toblerone has announced that the Matterhorn will be removed from its iconic packaging.
The “Swissness” legislation established the conditions under which a product may be labelled as being Swiss. The legislation states that “the place of origin or processing for Swiss indications of source for natural products and foodstuffs is the Swiss territory and customs union areas”. For a product to be marketed as “made in Switzerland”, at least 80% of the raw material weight that makes up the foodstuff must come from Switzerland.1 For milk and dairy products, the weight of milk as the raw material must equal 100%.
Mondelez, the makers of Toblerone, has stated that “the packaging redesign introduces a modernised and streamlined mountain logo that aligns with the geometric and triangular aesthetic”. Further, the new packaging will feature a "distinctive new Toblerone typeface and logo that draw further inspiration from the Toblerone archives and the inclusion of our founder, Tobler's, signature". The packaging will also now feature the statement, “established in Switzerland”, rather than “of Switzerland”.
In contrast, a US appeals court in Virginia has recently ruled that “gruyere” can be used to label cheeses that come from outside the Gruyère region of Switzerland and France.
A Swiss consortium, Interprofession du Gruyère, and a French consortium, Syndicat Interprofessionel du Gruyère, filed an application with the United States Patent and Trademark Office to register the word GRUYERE as a certification mark. A certification mark is a sign certifying that the goods or services in respect of which it is used are of a particular origin, material, mode of manufacture, quality, accuracy, performance or other characteristic.2 The US Dairy Export Council, Atalanta Corporation and Intercibus Inc. opposed the mark as they believed GRUYERE was generic and as such, ineligible for such protection.
The Appeals Court commented “the FDA [Food and Drug Administration] standard of identity does not impose any geographic restrictions as to where gruyere-labelled cheese can be produced. As a result, cheese—regardless of its location of production—has been labelled and sold as gruyere in America for decades.”3 In upholding the lower court’s decision, the Virginian Appeals Court ruled “the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand ‘GRUYERE’ to refer to a type of cheese, which renders the term generic.” The Appeals Court, in reaching this decision, considered various dictionary definitions of ‘Gruyere’ which did not include reference to any geographic region. It also considered other common usage evidence, such as references to gruyere in recipes and menus.
In a statement, the US Dairy Export Council commented, “This is an outstanding result for manufacturers and farmers here in the United States… We’re grateful that the Appeals Court agreed that nobody owns the exclusive right to use generic terms. This sets a terrific precedent for the right to use common food names in the United States”.4
What this means for New Zealand producers
The issues discussed above will already be familiar to some New Zealand consumers and food and beverage producers alike. For example, New Zealand honey producers have long been fighting to gain exclusive use of the term 'Mānuka honey' in overseas markets. While the examples above are not binding in New Zealand, they highlight the new trend towards focus on country of origin claims for food and beverage products.
In New Zealand, some types of products can be protected through the registration of a geographical indication (GI), which identifies a product as originating in a region, area or locality where its quality, reputation or other characteristic is attributable to its geographical origin. The Geographical Indications (Wine and Spirits) Registration Act 2006 establishes a registration regime for the GIs of wine and spirits.5 This means that currently GIs can be registered for local and international wines and spirits, such as Scotch Whisky and wine from Marlborough, Bannockburn and Champagne. A legislative change would be required for this registration regime to be extended to other kinds of products.
The proposed NZ-EU Free Trade Agreement, which is expected to be signed this year, includes obligations for New Zealand to protect around 2,000 European GIs for foods, spirits, wine and other beverages. Some of these protections will be phased in over between five and nine years. The Ministry of Foreign Affairs and Trade has stated that eventually New Zealand producers will need to stop using terms like sherry, port and feta on their products.6
In addition, section 13(j) of the Fair Trading Act (FTA) prohibits the making of false or misleading representations concerning the place of origin of goods or services. In 2019, Farmland Foods Limited was fined NZ$180,000 for misleading consumers about the place of origin of some of its pork products. The imagery, words used and overall presentation of the products’ packaging combined with references to New Zealand, the farm and a Bulls address printed on the packaging, gave consumers a false impression that the products were made from New Zealand reared pork, when the majority of the pork was actually imported from overseas.7
In a New Zealand context, there would be a strong argument that continued use of the Matterhorn as well as the “of Switzerland” statement would be a breach of the FTA for chocolate not produced in Switzerland, although the location of the derivation of the chocolate components would also have some bearing. There is no prescriptive percentage requirement under the FTA.
The case for Gruyere cheese would pose a more interesting question, as the New Zealand courts would need to decide whether Gruyere has become so generic in a New Zealand context that it refers to a style of cheese regardless of the location of production. New Zealand retailers currently tend to sell New Zealand produced cheese as ‘Gruyere-style’ rather than simply ‘Gruyere’, likely in recognition of the prospect it could otherwise be considered misleading and deceptive under the FTA.
If you have any questions or require any other guidance, please contact our team or your usual Bell Gully adviser.
1 Article 48b, Federal Act of 28 August 1992 on the Protection of Trade Marks and Indications of Source (Trade Mark Protection Act).2 Certification marks | Intellectual Property Office of New Zealand (iponz.govt.nz)3 221041.P.pdf (uscourts.gov)4 Court of Appeals Extends Huge Victory for Worldwide Producers of “Gruyere” | U.S. Dairy Export Council (usdec.org)5 Geographical Indications (Wine and Spirits) Registration Act 2006, ss 21 and 23.6 NZ EU FTA - Explainer - 30 June COB NZT (beehive.govt.nz)7 Commerce Commission - Farmland Foods fined $180,000 for misleading customers about country of origin (comcom.govt.nz