Protection for geographical indications and designations of origin is highly effective in Italy, especially when it comes to collective trademarks
It is widely accepted that the European agricultural market requires more effective legal measures against infringement than those found in the United States, Asia and other major world economies.
Because of its longstanding tradition of producing quality agricultural products and food, Italy has a great many geographical indications and designations of origin, which are vulnerable to both foreign and local infringement. However, a recent case from Florence suggests that combining the protection established under the systems for protected designations of origin and registered collective national and Community trademarks could provide a comprehensive protection for groups trying to safeguard and promote the origin and high quality of their products.
The Italian framework for the protection for geographical indications and designations of origin is set out in the Industrial Property Code (Decree-Law 30/2005). This in turn is based on the European harmonisation established by EU Regulation 510/2006 and also by EU Regulation 1234/2007, which governs wine, and subsequent regulations. Together, these provisions recognise geographical indications and designations of origin as IP rights that are worthy of equivalent protection equal to trademarks.
The Italian system has also embraced the key measures provided by the European legislature:
Articles 29 and 30 of the Industrial Property Code protect geographical indications and designations of origin against ‘unfair use’, defined as use designed to deceive consumers and exploit the fame and prestige of the indication. Any indication of origin with a widespread reputation can benefit from this legal defence. Consequently, the IP rights discussed in this article are comparable to well-known trademarks and are protected against any form of commercial exploitation, regardless of whether they have been registered.
Further, according to EU Regulation 510/2006, the only requirements to qualify for protection are as follows:
- The agricultural products or foodstuff must originate from the specific region, place or country to which the indication refers;
- The production, processing or preparation of the products must take place in the defined geographical area; and
- The quality or characteristics of the products must be due to a particular geographical environment with its inherent natural and human factors (so-called ‘milieu’).
Unlike standard trademarks, an indication of origin is not vulnerable to revocation due to dilution.
Alternatively, a geographical indication can be registered as a collective mark. In that case, regulation is mandatory and governs how the mark is exploited and supervised, as well as establishing penalties for misuse. A collective mark functions as a consumer guarantee against use of the trademark. Legal protection for collective marks is based on the EU Community Trademark Regulation (207/09) and Article 11 of the Italian Industrial Property Code.
This notwithstanding, Article 13/1 (lett b) of the code sets a lower bar for distinctiveness than for traditional trademarks, establishing that a collective mark can consist simply of an indication of the origin of the relevant product. Further, the owner of a collective mark can license it to third parties, provided that they comply with the provisions set out in the regulation. In this way, collective marks perform a quality warranty function.
Recent case law suggests that the protection granted by the Industrial Property Code – together with the relevant EU provisions on geographical indications and designations of origin – can afford a strong and efficient legal defence against infringement and unfair exploitation.
On October 21 2015 the Court of Florence delivered a decision affording protection to a designation of origin for a refined wine from Montepulciano, Vino Nobile di Montepulciano, as well as to various collective marks registered by a consortium formed to protect and promote the image of Vino Nobile di Montepulciano in Italy and around the world.
The claimant owned registrations for a variety of different national, Community and international collective marks, including the whole designation of origin or a part thereof (Vino Nobile and Nobile).
The consortium filed a lawsuit against two different local producers, Azienda Agricola Nobile Prima and Nobile Prima Srl, which were using the phrase ‘Nobile Prima’ as a company name, a domain name and as an indication on the label of their wines.
The claimant affirmed that this infringed its registered collective marks and designation of origin, and consituted unfair competition according to Article 2598 and following of the Civil Code. It therefore requested a provisional measure, in order to prohibit the use of the expression Nobile Prima on products by other parties.
The defendants countered by claiming that the collective marks in question were invalid under Article 25 of the Industrial Code and Articles 52 and 53 of the Community Trademark Regulation, affirming that they lacked novelty and had been registered in bad faith. The defendants also claimed that they had been using the expression Nobile Prima for many years before the collective marks were registered.
The Florence court rejected all of the defendants’ objections and granted full validity to the plaintiff’s collective marks on the basis of the reputation of the designation of origin and the connected expressions Vino Nobile and Nobile, which featured in the registered marks. In particular, the judge noted that the plaintiff’s marks were used as keywords in search engines by users looking for the claimant’s wine. Consequently, the court inferred that the defendants were making parasitic use of the claimant’s collective marks.
In addition, the court found that the claimant’s claim of infringement was well founded, because the heart of these collective marks – that is, the word nobile – was completely reproduced in the expressions used by the defendants.
Moreover, these collective marks should be considered strong trademarks, as their principal distinctive element – the word nobile – is completely unrelated to the products that it distinguished (ie, wine), bearing in mind that the toponym ‘Montepulciano’ combined with the expression ‘vino nobile identifies the activity of the consortium and the products related to it. Having examined the distinctiveness of the plaintiff’s collective marks, the court analysed the counterfeiting offence in more detail and found that the word ‘prima’ before the word ‘nobile’ – as used by the defendants – was a negligible and unimportant change and was insufficient to distinguish this from the claimant’s registered mark. Accordingly, the court found that the defendants had infringed the claimant’s mark.
Not even the complex and refined design of the defendants’ figurative NOBILE PRIMA mark was sufficient to avoid a finding of infringement, because of the presence of the word ‘nobile’, which immediately brought to mind the claimant’s products.
Further, the claimant’s collective marks are well known. Thus, according to Article 22.2 of the Industrial Property Code, they enjoy a high level of protection regardless of whether there was any actual likelihood of confusion.
The court’s next step was to rule on the defendants’ use of the word ‘nobile’ as part of their business name. The Industrial Property Code protects trademarks against business names, corporate or trade names, signs and business domain names. The court followed the same line of reasoning as before, which resulted in the judge prohibiting the defendants’ use of Nobile Prima as a business and corporate name. Moreover, the court ordered that the defendants transfer the domain name ‘www.nobileprima.it’ to the claimant.
The final part of the decision dealt with unfair competition in relation to the defendants’ wine labels. The court considered that the labels applied to Nobile Prima wine bottles were considerably different from those used by the claimant, so there was no likelihood of confusion, according to Article 2598(1) of the Civil Code. However, the judge found the claim of unfair competition for exploitation of qualities of the Nobile di Montepulciano wine to be well founded, according to Article 2598(2) of the code.
In light of this, the court awarded damages of €30,000 for lost profits and damage to the consortium’s image and for misuse of the protected designations of origin Vino Nobile di Montepulciano and the various registered collective trademarks.
Judgments in IP cases are commonly published in daily newspapers – this helps businesses to restore their reputations
Judgments in IP cases are commonly published in daily newspapers – this helps businesses to restore their reputations, especially where this has been damaged. The court ordered that its judgment be published in a popular Italian newspaper at the defendants’ expense.
This decision demonstrates that protection for geographical indications and designations of origin is highly effective in Italy, especially when it comes to collective trademarks.
Nicoletta Colombo is a partner at CREA Avvocati Associati/Bugnion Legal, where she draws on wide-ranging expertise in intellectual property. While her practice is mostly focused on internet-related matters, specifically domain names, online infringement and the protection of industrial property rights online, she has also acquired extensive knowledge in trademarks, particularly Community quality marks in the food industry. She has been an arbitrator and mediator at the World Intellectual Property Organisation since 2003, and at the Chamber of Arbitration of Milan since 2009.
Donatella Prandin is a partner of Bugnion SpA. She graduated in law from the University of Milan and joined the firm in 1991. She is a registered Italian trademark attorney and a Community trademark and design attorney. Ms Prandin has extensive IP experience. Her practice covers trademark, copyright, design and domain name issues.