In a case involving the United Kingdom, Italy has confirmed that it will fight strenuously at the EU level in order to protect its geographical indication against infringements, particularly in the strategic food sector.
Food: a vital Italian sector
In these hard times, Italy's vitality in the agricultural and food sectors is evidence of the global success of the 'Made in Italy' brand. The Italian food industry is now regarded as a testament to the Italian way of living, in the same way as fashion and industrial design. The international market for Italian food has grown exponentially, with around 1.3 million tons of food produced with a turnover of €7 billion in production and €13 billion in consumption.
Italian institutions are quite aggressive in protecting the sector against counterfeiting and infringement, particularly after the introduction of the ex officio system by the European Union. This instrument aims to achieve the more immediate and efficient protection of geographical indications throughout the European Union, thanks to cooperation between all member states.
San Daniele infringed
The ex officio system appears to be an effective instrument to fight the widespread counterfeiting of Italian geographical indications. It has now been tested by the Consortium for the Protection of Prosciutto San Daniele - a high-quality ham from the northeast of the country - together with the Italian authorities, in order to fight a case of infringement in the United Kingdom.
Thanks to a warning from the consortium, the Italian authorities promptly informed the UK Department for Environment Food and Rural Affairs about an online special offer from a UK company which infringed the Prosciutto San Daniele protected designation of origin.
After having ascertained the validity of the report, the UK authorities took the appropriate measures to stop sales of the ham, as it did not in fact come from San Daniele.
Legal background
The new instrument of protection was introduced by the Council on 21st November 2012 and EU Regulation 1151/2012, which expressly states in Article 13 that:
"Member States shall take the necessary administrative and judicial steps to prevent or stop the unlawful use of protected designations of origin and protected geographical indications according to paragraph 1, produced or marketed in that Member State."
The ex officio protection, extended to all member states and evoked by the Italian authorities since the Parmesan case, has now become a regulation.
When the Parmesan case landed before the European Court of Justice (ECJ) in 2008, there were two opposing camps. On the one hand were those (including Italy) which believed that conflicts between trademarks and geographical indications should be resolved by direct intervention of the relevant national authorities involved. On the other were those (including Germany) which argued that there was no such obligation, and that such matters should be left to the courts to decide. This last position prevailed in the
ECJ's decision
Such an unsatisfactory judgement led Italy and other member states to request again the introduction of ex officio protection during the consultations before adoption of the EU regulation.
From the Italian point of view, and as evidenced by the San Daniele case, the negotiations have been a success, which will now allow Italian consortia and their European counterparts to benefit from immediate protection by the individual authorities designated by member states. The protection applies whenevere there is an evident violation of the regulations concerning protected designations of origin or geographical indications.
Role of law enforcement
In Italy, the ministerial decree implementing EU Regulation 1151/2012 imposes a duty to prevent or stop the illegal use of geographical indications on the Central Inspectorate for the Protection of the Quality and Fraud Repression of Agri-Food Products.
This responsibility exists alongside other similar responsibilities held by other Italian public authorities at various levels and in different ways. Several law infringement agencies are at the forefront of the fight against counterfeiting (in the broadest sense of the word).
Italian Patent and Trademark Office
In Italy, the system aimed at ensuring that geographical indications play a fully pro-competitive role already provides for an ex officio protection system which works as a preventive tool within the trademark registration procedure. In case of doubt, according to Article 170(2) of the Industrial Property Code, the Italian Patent and Trademark Office (IPTO) should seek the advice of the Ministry of Agriculture and Forestry. This provision states that:
"in connection with those trademarks relating to primary and processed agriculture and agri-food products, using geographical indications, the [IPTO] shall transmit the trademark specimen and any other document to the Ministry of Agriculture and Forestry which will issue its pertinent opinion within 10 days from the receipt of the request."
According to these arrangements, the IPTO relies on the Ministry of Agriculture and Forestry to determine whether the use of geographical indications together with trademarks in the field of primary and processed agriculture and agri-food products conflicts with the EU regime protecting geographical indications.
The Industrial Property Code gives no guidance as to the mandatory nature of the opinions issued by the Ministry of Agriculture and Forestry, although in practice, if the ministry recommends rejecting the mark, the IPTO is likely to comply (as it does in a parallel procedure concerning coats of arms).
On the other hand, it is not unusual for examiners to fail to request such an opinion when they do not realise that there may be a conflict with the regulations for the protection of geographical indications.
Therefore, they end up granting trademark registrations that conflict with geographical indications.
In the absence of the possibility of starting an opposition based on a geographical indication before the IPTO, it is advantageous, once a trademark surveillance service has highlighted a sign which falls under Article 170(2), to monitor the registration procedure in order to be ready to file specific third-party observations requesting rejection of the application.
In many cases preliminary contact with the IPTO, highlighting that the ministry's opinion is missing and anticipating that third-party observations will eventually be filed, secures the desired effect, with the IPTO either rejecting the application or contacting the ministry.
