Awareness campaign kick-starts anti-counterfeiting crusade

As part of the Italian government's measures to fight counterfeiting, Minister for Productive Activities Antonio Marzano has launched a campaign to inform the Italian public on the impact counterfeiting has on the national economy. Marzano also disclosed details of other anti-counterfeiting measures that were first announced when the Finance Act 2004 was introduced to Parliament (see New bill aims to combat counterfeiting).

The Italian market is the biggest market for counterfeit goods in Europe and is the third biggest market worldwide after China and South Korea. A particular worry is that the Italian market is overflowing with foreign goods that ride on the reputation for quality of genuine Italian-made products by bearing the label 'Made in Italy'.

Accordingly, the Italian government proposed three main measures to fight counterfeiting:

• the extension of the protection afforded to indications of origin;
  
  
• the protection of the 'Made in Italy' appellation as a trademark; and
  
  
• the creation of a national committee against counterfeiting.

Marzano has now disclosed further details of how these measures will operate in practice.

First, the importation, exportation or marketing of products bearing false or misleading indications of origin will be a criminal offence punishable under Article 517 of the Italian Penal Code, which provides for a term of imprisonment of up to one year or a fine of €1,032. This will enable administrative authorities to remove 'Made in Italy' labels when the goods to which they are affixed do not originate from Italy. Even if the foreign origin of the goods is shown, signs or symbols that are likely to lead consumers to think that those products are Italian will be considered to be misleading indications. The removal of such signs will be at the expense of the offender.

If a violation of IP rights is ascertained, the administrative authorities may order ex officio, but with the consent of the judicial authorities, the seizure of the counterfeit goods. The goods seized will be destroyed after three months, where possible at the expense of the offender.

Second, 'Made in Italy' is to become a collective mark portraying Leonardo da Vinci's Vitruvian Man, which will be owned by the Ministry of Productive Activities. It will be granted to companies offering Italian products that comply with the production requirements provided for in the relevant regulations. Such requirements concern not only the Italian origin of the products but also the particular nature and conditions of their production.

While this potentially constitutes a mighty weapon, it has met with mixed reactions. Those against are of the opinion that 'Made in Italy' is already a mark of excellence. They fear that the proposed collective mark will create a two-tier market.

Lastly, the national anti-counterfeiting committee will be set up within the Ministry of Productive Activities. Legal help desks will be created at the Institute for Foreign Trade offices and diplomatic missions. They will provide legal assistance to companies in relation to the registration of trademarks and patents, and in the fight against counterfeiting in compliance with the directives of the ministry and the policies of the national anti-counterfeiting committee. This is likely to be particularly helpful for small and medium-sized companies.

Ginevra Righini and Francesca Rolla, Lovells, Milan