Italy: The extent of protection of non-registered Geographical Indications: the last episode of the “Salame Felino” case

01 July 2015

Linda Brugioni

On February 12, 2015 with its decision no.2828, the Italian Supreme Court concluded the last episode of the longstanding battle between the Association of the Producers of Salame Felino and Kraft and Ass.i.ca. (the Italian Meat Producers Association).  This concerned the non-registered geographical indication "Salame Felino" (a kind of salami produced in the area of Parma, especially in the municipality of "Felino"), whose protection either under former Regulation EEC/2081/1992 (currently replaced by Regulation EU/1151/2012) or under national law has been debated throughout the years.

The Supreme Court judgment was issued following the decision of the CJEU (C- 35/13 – decision of May 8, 2014, see our previous article at http://www.twobirds.com/en/news/articles/2014/global/food-law-july/salame-felino-may-be-protected-under-national-italian-legislation).  The CJEU clarified that Regulation EEC/2081/1992 does not grant protection to non-registered geographical indications, but that does not prevent protection being available under national law as long as that law does not impair the objective of Regulation 2081/1992 nor clash with the EU principle of free movement of goods.

In light of the CJEU decision, the Supreme Court held that "Salame Felino" could not be protected under the applicable national law (i.e. Article 31 of the Italian Legislative Decree no. 198/1996) since the quality and characteristics of the product designated as "Salame Felino" can no longer be derived directly from the geographical area of the municipality of Felino, so excluding the protection of "Salame Felino" as a geographical indication.

However, the Court considered that the CJEU decision would not prevent the application of the ordinary rules against unfair competition, and in particular in the event: i) the used sign falsely misappropriated the qualities associated with the geographical name; and/or ii) the used sign misled the consumers as to the geographical provenance of the product, regardless of any reference to quality.

In this case, only the second proposition could be successfully claimed. However, the Association of the Producers of Salame Felino had limited their claim to the misappropriation of qualities under proposition i) above, leading the Supreme Court to issue a judgment in favour of Kraft and Ass.i.ca.

Interestingly, this decision provides some guidance to businesses and the relevant associations as to how to obtain protection for geographical indications outside of the registration regime provided at a European level.

First, the Court suggests the national law providing for the protection of geographical names for products deriving their qualities from the relevant geographical area. However, said protection would be subject to that law being established as being compliant with the EU principles on the protection of registered geographical indications and of the free movement of goods.

Second, the Court suggests the national law of unfair competition as a means of protection; this second approach appears to be consistent with TRIPS and the Paris Convention, which both grant protection to geographical indications regardless of registration.

In particular, the law of unfair competition might be successfully claimed both because consumers could be misled as regards the quality of the product (quality that is linked to a specific geographical area, the name of which is included in the geographical indication in issue) and because the public could be misled as to the geographical provenance of the product.

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