“Made in Italy”

21 July 2010

Licia Garotti, Linda Brugioni

The topic of foodstuff tracking through the label “Made in Italy” is a very sensitive issue in Italian legislation, case law and public opinion.

The underlying reasons are quite straightforward: the positive reputation gained in years by the Italian food culture is directly linked to the genuine origin of the ingredients within the national borders.

However, rather surprisingly, the recent law no. 55 of 8 April 2010, regulating the use of the label Made in Italy, “forgot” the foodstuff sector, focusing only on the textile and leather market.

This omission could, however, have a positive effect, since many commentators already outlined that the ambiguity of the law could in reality harm Italian producers.

The difficulties related to the tracking of foodstuff are well recalled in the decision of the Italian Supreme Court, Criminal Division, dated 12 July 2007, no. 27250.

In the case brought before the Italian Supreme Judges, an Italian producer of syrup fruits used the expression “Made in Italy” on the packaging of its products.

In reality, only a small percentage of the fresh fruit was picked up in Italy while the rest was imported.

The Italian producer was prosecuted for the alleged violation of Article 517 of the Italian Criminal Code.

Such rule is aimed at protecting the consumer from any misleading name, trade mark or sign affixed on the product, as far as the relevant origin is concerned.

The interpretation given by the case law to the expression “origin” refers to the provenance from a specific business and/or entrepreneur, who becomes responsible for any misrepresentation.

For judging the case at issue, the Supreme Court interpreted the meaning of “origin”, taking into account the “country of origin”. Where the product is not protected by a Geographical Indication, the country of origin is the one where the “last substantial transformation” took place, according to Articles 23 and 24 of the European Custom Code.

As a consequence, given that the last substantial transformation, i.e. the syrup process, was carried out in Italy, the Supreme Court stated that the label “Made in Italy” affixed by the Italian producer on the packaging of his product does not constitute a misrepresentation, regardless of the foreign provenance of the fresh fruits.

“Consortio del Prosciutto di Parma”

Still concerning the risk of misrepresentation of consumers on foodstuff names, it is worth mentioning two decisions held by the WIPO Arbitration and Mediation Centre involving the Consorzio del Prosciutto di Parma (Parma Ham Consortium) (Case D2010-0002 and Case D2010-0257).

Both decisions concern the infringement of the Consorzio’s IP rights by the registration of the domain names “crudo di parma” in the extensions .info, .org, .net, .com and “lavorazioneprosciuttiparma.com” by two Italian companies not belonging to the Consorzio.

In both cases, the domain names were considered causing a likelihood of confusion with the Consorzio’s IP rights. In particular, the name “crudo di parma” (meaning, as certainly well known, cured ham from Parma) far away from being considered as a generic expression, would be likely confused by the public with the trade mark “Consorzio del prosciutto crudo di parma” registered by the Consorzio.

Moreover, thanks to the broad reputation gained by the trade mark “Consorzio del prosciutto crudo di parma”, the registration of the above mentioned domain names was held to be in bad faith.

“TERRA IONICA UNICA”

The meaning of Community collective trade mark has been used lately by groups of producers for protecting food and beverages specialties.

In particular, recently the Provincia di Taranto has been granted with the registration of the collective Community trade mark “TERRA IONICA UNICA” for products as wine, spirits and foodstuffs for creating a badge of origin closely linked with the geographical area in the South of Puglia.

Similarly, the Chamber of Commerce of Piacenza registered the collective Community trade mark “QUALITA’ PIACENZA 100 SAPORI” (“Quality Piacenza 100 flavours”) for, among others, foodstuff and beverages. In this respect the initiative of the aforementioned Chamber of Commerce was quite interesting, especially considering that they suggested other European cities adopt the trade mark “QUALITA’ PIACENZA 100 SAPORI”, provided that the distinguished product complies with the standard defined in the statute of their trade mark. It would, however, be quite fascinating to check how products coming from different European countries could comply with requirements strictly related to the Italian territory.

Compulsory labelling for foodstuff

Finally, with reference to the European legislation on labelling, presentation and advertising of foodstuff, the European Parliament has drafted a new regulation which, once in force, should establish a system of compulsory labelling for foodstuff.

Among others, the new proposal contains very strict regulation of the nutritional information to be included in the labelling of prepackaged foodstuff. It is sufficient to think that, should the percentage of sugar or fat be above a determined threshold, the product could not be advertised because of its nutritional qualities.

The Italian confectionary industry strongly complained about such new proposal, which could likely harm certain marketing campaigns made over the years by some leading companies.

Think about the advert for the most popular nougat spreadable cream that boasts its qualities as the perfect breakfast of the Italian Football National Team.

Actually, the last participation of Italy to the Football World Cup gave a substantial contribution for a different marketing twist!