On several occasions over the last few months, the Italian Supreme Court has dealt with the issue of the possible deceptiveness of the use of trade marks, expressions or signs evoking Italy in connection with products not originating from Italy, i.e. the protection of the so called “made in Italy” stamp.
The legal framework for this subject is provided by: i) Article 517 of the Italian Criminal Code, according to which anyone who sells products bearing brands or trade marks which may deceive the purchaser about the origin or the quality of the product is subject to imprisonment of up to one year or a fine up to 20,000 Euros; ii) Article 49.4 of Law no. 353/2003, according to which including the “made in Italy” stamp on products or goods not originating from Italy pursuant to the European regulations on the origin - as well as any other mark, figure or expression which could incorrectly induce the consumer to consider the product or good of Italian origin – constitutes a false indication and is as such punishable pursuant to Article 517 of the Italian Criminal Code.
In particular, the Supreme Court has been asked to decide whether the expression “origin of the product” refers to a “geographic” origin (and so to a particular place) of the product or to its “entrepreneurial” origin (and so to a particular producer), with obvious different consequences as to the existence of the crime.
In its first decision of 2006 the Court, partially changing its traditional position (discussed below), gave importance to the geographic origin of the product, stating that the place where the product is manufactured may have importance with reference to products – like those of the clothing industry – for which world wide Italian leadership is undisputed especially for the quality of the workmanship used. Therefore, the Court held that the expression “Designed & Produced by XXX Italy” printed on the label of items of clothing not manufactured in Italy constitutes an infringement of Article 517 of the Italian Criminal Code.
In subsequent decisions, however, the Court has returned to its traditional position and confirmed that (with the exception of the protected geographical indications – PGI and protected designation of origin – PDO ) the guarantee for the consumer provided by Article 517 of the Criminal Code relates to the origin and provenance of the product from a particular producer who bears the legal, financial and technical liability for production; consequently, if the ultimate producer is Italian, any outsourcing of production does not render deceptive the use of trade marks, expressions or signs evoking Italy.
Accordingly, the Court held that the following expressions:
- Conceived by XXX Italy” (for glasses manufactured in China)
- “Manufactured by XXX – Imported product” (for articles of clothing manufactured in China)
- “Officina del Tempo – Italy- Italian design” (for watches manufactured in Hong Kong)
printed on products of Italian companies were not a false indication of origin.
In particular, the Court stated clearly in the last of these decisions that, “generally, the place or the factory where the product is manufactured is irrelevant for the quality of the product itself … the trade mark does not guarantee the quality of the product; it represents the link between a product and the firm with reference, not to the concrete manufacture, but to the responsibility of the manufacturer who guarantees its quality and is the sole responsible toward the consumers”.
To conclude, although the recent decisions referred to above approve certain wording as not amounting to a false indication of origin, use of the exact words “made in Italy” has been viewed more strictly by the Italian Courts. In its decision concerning the use of “made in Italy” (and not any other expressions simply evoking an Italian origin) for products not manufactured in Italy, the Supreme Court has stated expressly that such use constitutes an infringement of Articles 517 of the Italian Criminal Code and 49.4 of Law no. 353/2003. As a matter of fact, the Court was of the opinion that the wording “made in Italy” suggested to consumers that the product had been entirely manufactured in Italy, thus providing information on the origin of the product that was certainly false and misleading. In this case, the fact that the product was manufactured (abroad) on behalf of an Italian producer (who guaranteed its quality) was irrelevant, since consumers might have been induced to purchase the product just because it claimed that it had been manufactured in Italy.
 Council Regulation No. 2913/1992 - the Community Customs Code, according to which: “Goods whose production involved more than one country shall be deemed to originate in the country where they underwent their last, substantial, economically justified processing or working in an undertaking equipped for that purpose and resulting in the manufacture of a new product or representing an important stage of manufacture” (Article 24).
 Cass. pen. No. 2648 dated 20 January 2006
 See, amongst the others, Cass. pen. No. 2500 dated 7 July 1999 and Cass. pen. No. 3669 dated 24 November 2005
 Council Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, according to which: “(a) designation of origin: means (i) the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: (ii) originating in that region, specific place or country, and (iii) the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area; (b) geographical indication means: (i) the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: (ii) originating in that region, specific place or country, and (iii) which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area” (Article 2.2).
 Cass. pen. No. 21797 dated 22 June 2006
 Cass. pen. No. 24043 dated 2 March 2006
 Cass. pen. No. 8648 dated 1 March 2007