PARMACOTTO not geographically misdescriptive, Supreme Court rules

Italy

The Italian Supreme Court has dismissed an invalidation action against the PARMACOTTO mark for ham. Rovagnati SpA, a leading producer of ham, alleged that the mark misled consumers into believing that PARMACOTTO hams shared characteristics with the famous Parma hams - raw hams produced in the Parma region of Italy according to specific rules and bearing the designation of origin PROSCIUTTO DI PARMA - and thus was geographically deceptively misdescriptive (Case 6080, March 28 2004).

Rovagnati sought a declaration of either nullity or forfeiture of Parmacotto SpA's PARMACOTTO mark pursuant to Sections 18(c) and 47(b) of the Italian Trademark Act, which establish, among other things, that a geographically deceptive mark cannot be registered and, if registered, should be declared null and void. To support its arguments of deceptiveness, Rovagnati submitted a survey on consumers' perception of the PARMACOTTO mark. It also asked the Bologna Court of Appeals to order a similar survey to be carried out by experts appointed by the court.

The court denied Rovagnati's claims. It ruled that judges must assess consumers' perception of a given trademark by reference to the average consumer of the products to which the trademark applies - not through surveys.

Rovagnati appealed to the Supreme Court.

The Supreme Court found that the Bologna Court of Appeals had appropriately applied the relevant rules on geographically deceptive trademarks. The Supreme Court held that the mere use of a geographical name (eg, Parma) in a mark does not, per se, mean that the trademark is deceptive. To be deceptive, the mark would have to give consumers a false perception as to either the origin or qualities of the products.

The court reasoned that PARMACOTTO cannot be considered deceptive as to the origin of the hams as they are produced in the Parma area. The court also found that Rovagnati's allegations and survey conclusions that consumers associated Parmacotto's hams with Parma ham were groundless.

The court discussed at length the proper methods for assessing the possible deceptiveness of a trademark. It held that it is for the judge to appraise, theoretically and not in practice, the characteristics of the average consumer of a given product; based on these characteristics, the judge will be in a position to rule on whether a given trademark is deceptive, with no need to rely upon opinion surveys.

The Supreme Court found that the Bologna Court of Appeals had correctly found that the average consumer of ham was capable of distinguishing between cooked hams such as those sold under the PARMACOTTO mark and raw hams (eg, Parma ham bearing the PROSCIUTTO DI PARMA designation), in particular in view of the price difference between the products. Accordingly, the word Parma in PARMACOTTO could not be considered to mislead consumers as to the qualities of the product.

Francesca Rolla, Lovells, Milan

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