Salame Felino may be protected under national Italian legislation

31 July 2014

Tom Darvill

The CJEU has ruled on the circumstances in which Article 2 of Regulation 2081/92 (as amended by Regulation 535/97) (the "Regulation") will protect a geographical designation that is not covered by a Community registration (C-35/13).

Salame Felino is a salami named after the town of Felino, in the province of Parma, Italy.  The Associazione fra produttori (the "Associazione") brought proceedings in the Parma District Court against Kraft Jacobs Suchard SpA ("Kraft"), for unfair competition on the basis that Kraft had offered for sale a salami with the name 'Salame Felino', which had in fact been produced in Lombardy, Italy.

The District Court held that the Associazione was not able to rely on the Regulation as 'Salame Felino' was not protected by a Community registration.  However, as the products marketed by Kraft did not originate from Parma and the name 'Salame Felino' had acquired a reputation amongst customers with respect to its characteristics which resulted from a geographical feature, the District Court ruled that the Associazione could rely on Article 31 of Italian Legislative Decree No 198/1996.

The case was appealed to the Italian Supreme Court of Cassation, which stayed the proceedings and referred two questions to the CJEU for a preliminary ruling.  It asked: (i) which set of rules should be applied to a geographical designation which was not the subject of a Community registration; and (ii) whether Article 2 of the Regulation prevented a producers' association from benefitting from the exclusive use of a geographical designation within a specific Member State without obtaining a legally binding measure from that Member State which establishes requirements and boundaries relating to the protection of that designation.

The CJEU held that the Regulation only provided protection to a geographical designation which has obtained a Community registration.  However, that geographical designation may still be protected under national legislation relating to geographical designations for products which have no specific link between their characteristics and their geographical origin, provided that: (i) the implementation of that legislation does not undermine the objectives of the Regulation; and (ii) it does not contravene the principle of free movement of goods.  Both (i) and (ii) are to be determined by the national court.