Salame Felino designation may be used legitimately, says ECJ

European Union
In Severi v Regione Emilia-Romagna (Case C-446/07, September 10 2009), the European Court of Justice (ECJ) has issued its decision in 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, now Grandi Salumifici Italiani SpA (GSI), makes salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’. Since 1970 it has produced this salami around 50 kilometres from Felino, in Modena. 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 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 the operative 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?"
 
On May 7 2009 Advocate General Eleanor Sharpston QC delivered her opinion. With regard to the first question, the advocate general stated that such a name cannot be assumed to be generic "unless and until the application has been rejected by the European Commission on the grounds that the name has become generic". With regard to the second question, the advocate general held that such a name may legitimately be used provided that it is not used in a way which is likely to mislead consumers. Finally, the advocate general deemed the third question to be inadmissible (for further details please see "Advocate general delivers opinion in Italian salami case").
 
The ECJ has now given its answers to these questions. With regard to the first question, the ECJ agreed with the advocate general that Articles 3(1) and 13(3) of Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffsmust be interpreted as meaning that the designation of a foodstuff containing geographical references which has been the subject of an application for registration as a PDO or PGI cannot be presumed to be generic unless the Commission has rejected the application on the specific ground that that designation has become generic.

The ECJ also agreed with the advocate general with regard to the second question, holding that the designation of a foodstuff containing geographical references which is not registered as a PDO or PGI may legitimately be used if the labelling of the product does not mislead the average consumer. The ECJ also agreed with the advocate general that:
 
"[f]or the purpose of assessing whether that is the case, national courts may have regard to the length of time during which the name has been used. By contrast, any good faith on the part of the manufacturer or retailer is irrelevant in that regard."
 
Finally, the ECJ agreed with the advocate general that the third question was inadmissible, holding that:
 
"[...] the question of whether the proprietor of a collective trademark relating to a foodstuff and containing a geographical reference identical to the designation at issue in the main proceedings may oppose the use of that designation is manifestly irrelevant to the resolution of the dispute in the main proceedings [...]."
 
The decision is good news for producers of Salame Felino: they can carry on selling it so long as the average consumer is not misled by its appellation. 'Misled' is an interesting concept in this case: most local Italians would not be misled because they are circumspect about salami, and most non-locals would not be materially misled unless they assume that salamis from Felino and Modena are different entities.
 
Jeremy Phillips, IP consultant to Olswang, London

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