ECJ rules on interpretation of Regulation 2081/92 on PGIs and PDOs

In Assica - Associazione Industriali delle Carni e dei Salumi v Associazione fra produttori per la tutela del ‘Salame Felino’ (Case C-35/13), following a request for a preliminary ruling by the Corte suprema di cassazione (Italy), the Court of Justice of the European Union (ECJ) has considered the interpretation of Article 2 of Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

Salame Felino is the name a pure pork salami sausage; its name comes from the town of Felino, a conurbation located in the province of Parma. In January 1998, the claimant Associazione fra produttori per la tutela del ‘Salame Felino’ brought proceedings against Kraft Jacobs Suchard before the Tribunale di Parma for unfair competition on the ground that Kraft Jacobs Suchard was selling a salami sausage called ‘Salame Felino’, but which had been produced outside the territory of the Parma region, in the region of Lombardy, in Cremona.

In February 2001 the Tribunale di Parma found that the Associazione could not rely on Regulation 2081/92 (the EU legislation then in force on protected geographical indications (PGIs) and protected designations of origin (PDOs)), as the name Salame Felino did not constitute a PGI or a PDO under that regulation.

However, it could still rely on Article 31 of the local Italian law, Legislative Decree 198/1996. Holding that the products marketed by Kraft Jacobs Suchard did not come from the territory of Parma, whereas Salame Felino had acquired a reputation among consumers with respect to its characteristics, which stemmed from a particular feature related to its geographical environment, the Tribunale di Parma held that the conduct of Kraft Jacobs Suchard constituted an act of unfair competition.

Kraft Jacobs Suchard, by now rebranded as Kraft Foods and joined by the trade association Assica - Associazione Industriali delle Carni e dei Salumi to which it belonged, appealed to the Corte d’appello di Bologna which, in January 2006, dismissed that appeal and held that the protection offered by Legislative Decree 198/1996 did not conflict with Regulation 2081/92: the registration of a name as a PGI or PDO was needed only if that regulation were to be invoked, but not for protection under national law.

Kraft appealed further to the Corte suprema di cassazione, which decided to stay the proceedings and to refer the following questions to the ECJ for a preliminary ruling:

“(1) Should Article 2 of Regulation 2081/92 be interpreted as precluding a producers’ association from being able to claim the right exclusively to use, within the [European Union], a designation of geographical origin used within a member state to designate a specific type of salami sausage, without having first obtained a legally binding measure from that member state establishing the boundaries of the geographical area of production, the rules and regulations governing production, and any requirements which producers may have to satisfy in order to be entitled to use that designation? 

(2) In the light of Regulation 2081/92, which set of rules should be applied within the [European Union] market and also within the market of a member state to a geographical designation which has not obtained the registration referred to in that regulation?”

On May 8 2014 the ECJ sensibly ruled that:

"Council Regulation ... 2081/92 ..., as amended by Council Regulation ... 535/97 ..., must be interpreted as meaning that it does not afford protection to a geographical designation which has not obtained a Community registration, but that that geographical designation may be protected, should the case arise, under national legislation concerning geographical designations relating to products for which there is no specific link between their characteristics and their geographical origin, provided, however, that, first, the implementation of that legislation does not undermine the objectives pursued by [the] regulation and, secondly, it does not contravene the principle of the free movement of goods under Article 28 EC, matters which fall to be determined by the national court."

Now the action can go back to Italy so that it can be brought to its conclusion.

Jeremy Phillips, IP consultant to Olswang LLP, London