Advocate general delivers opinion in Italian salami case

European Union
Advocate General Eleanor Sharpston QC has delivered her opinion to the European Court of Justice (ECJ) in Severi v Regione Emilia-Romagna (Case  C-446/07, May 7 2009), a reference for a preliminary ruling from the Civil Court of Modena, Italy.

Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti e figli SpA, now Grandi Salumifici Italiani SpA (GSI), makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’. Since 1970 it has produced this salami in Modena, around 50 kilometres  from Felino. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name Salame tipo Felino on its labelling in a way that was misleading to consumers. The region took the view that GSI had infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13/EC on the approximation of the laws of the member states relating to the labelling, presentation and advertising of foodstuffs into national law. At this time, the term ‘Salame Felino’ was neither registered as a protected designation of origin (PDO) nor as a protected geographical indication (PGI). However, an application had been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Civil Court of Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trademark. The court stayed the proceedings and referred the following questions to the ECJ:
 
"1. Must Articles 3(1) and 13(3) of Regulation 2081/92 (now Articles 3(1) and 13(2) of Regulation 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a PDO or a PGI within the meaning of those regulations has been 'rejected' or blocked, must be considered generic at least throughout the period for which such 'rejection' or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation 2081/92 (now Regulation 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the [First Trademarks Directive (89/104/EEC)] be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?"
 
Advocate General Sharpston recommended that the ECJ answer the first two questions as follows:
 
"(1) [The relevant provisions] must be interpreted as meaning that the name of a food product containing geographical references  for which an application has been made for registration as a protected designation of origin or a protected geographical indication within the meaning of those regulations  cannot be assumed to be generic unless and until the application has been rejected by the Commission on the grounds that the name has become generic.

(2) The same provisions, read with Article 2 of Directive 2000/13/EC [...], must be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a protected designation of origin or a protected geographical indication within the meaning of those regulations, may legitimately be used provided that the name is not used in a way which is likely to mislead the average reasonably well-informed, observant and circumspect consumer. In assessing whether that is the case, national jurisdictions may have regard to the length of time during which the name has been used. The good faith (or otherwise) of the producer is, however, irrelevant
."
 
With regard to the third question, the advocate general pointed out that the ECJ may decline to answer a question referred to it for a preliminary ruling if it has no relation to the actual facts of the main action or to its purpose. In the third question, the Italian court asked whether the First Trademarks Directive (89/104/EEC) could provide another basis for preventing GSI from using the name Salame Felino. However, the administrative penalty contested in the main proceedings was based only on an alleged infringement of the national provisions transposing Article 2 of Directive 2000/13/EC.

The advocate general further held that:
 
"although the administrative penalty noted that [SALAME FELINO] is a registered mark, that was in the course of establishing that GSI’s use of ‘Salame tipo Felino’ was misleading to consumers. Similarly, GSI referred to the use in good faith of the name ‘Salame Felino’ by traders outside the municipality of Felino in relation to a collective trademark as part of its argument that its use of the name on labelling did not mislead consumers."
 
The advocate general noted that the absence of allegation that there had been infringement of a collective trademark indicated that the issue of whether the holder of a collective trademark could oppose the use in good faith of a name similar to the collective mark was irrelevant to the central issue before the national court.
 
The advocate general thus deemed the third question to be inadmissible.
 
The decision of the ECJ in this case will be interesting, as there is not a large volume of jurisprudence on the interface between trademarks, collective marks and geographical indications. The final ruling will affect both strategic thinking and portfolio development issues involving the exploitation of geographical terms where that exploitation is not coextensive with the area to which they relate.
 
Jeremy Phillips, IP consultant to Olswang, London

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