OLLIP P.C.

Orazio Olivieri, Deputy Director, DINTEC (Italy)¹

Introduction

At the end of the Nineties, the fear spread around Italy that the introduction of the Community regulations concerning sanitary self-control (HACCP) could compromise the existence of some typical food products. Given that these food products involve, in many cases, traditional production processes that involve the use of methods and means that were suspected not to entirely in compliance with the new regulations, mention was even made of the risk of extinction for certain food products. Fortunately, the fear, which was clearly the fruit of bad information, turned out to be substantially groundless.

Nevertheless, a positive fact emerged from that experience: under pressure from the media, the Public Administration had conducted a census of the existing traditional products and the result of this exercise was a list with relevant enclosed data sheets, published in 2000 and updated every year, of more than 3,500 products. This list only takes into consideration the products for which manufacturing, preservation and ripening methods are homogeneously deep-rooted in the territory and have followed traditional rules for a period of at least 25 years. In spite of this limit, the number is extraordinary high and it is probably rounded off rather than rounded up.

Protecting Traditional Food Products

Once the doubts concerning the survival of the traditional products were removed, the operators of the sector started to wonder what they could do with this extraordinary agricultural and food wealth. In fact, it was immediately obvious that only a small percentage of the products coming out from the census could have aspired to a Protected Designation of Origin (PDO) or Protected Geographical Indication (PGI) according to the EEC Regulation 92/2081. In many cases, the concomitant existence of certain problems would have prevented it: the scarce fame of the product, its particular features, the limited economic size of the production, the non bright market perspectives and, last but not least, the motivation level of the producers. Nevertheless, also for these products there was, and there still is, a big problem of protection from imitations and counterfeits.

The solution of the network of Italian Chambers of Commerce has been to use the geographical collective mark, as per article 15 of the EEC Directive 89/104 and the relevant national law, each time that the requirements for the PDO/PGI registration were not met. On this basis, a process was initiated, and is still in progress, that has seen an important number of products becoming the object of protection, in some cases on the initiative of the producers’ associations with the support of the local Chamber of Commerce, in other cases on the direct initiative of the Chamber of Commerce itself.

Three Major Challenges

The challenges faced in this experience are mainly three.

The first challenge concerns the possible interference of the Directive 89/104 on the approach of the member States legislation relevant to the trademark with the Reg. 92/2081 concerning PDO/PGI. This is a very delicate point since the European Commission, in the presence of a link between qualitative content and territory of origin of the product, has always been unwilling to accept the use of different instruments from PDO/PGI. Therefore, in the search for a solution, the observations of the Commission have been taken into consideration, as well as the decisions taken by the European court of justice and, in particular, two of them which are very important: one concerning the Turrón de Alicante (10/11/1992), that has stated the necessity of protection for the geographical denominations for which a link between the product qualitative content and the area of origin is not pointed out; and one concerning Warsteiner’s Bier (7/11/2000) that has clarified that the application field of Reg. 92/2081 is confined to the cases where the link between the qualitative features of the product and the geographical origin is to be seen as a subordinate relationship.

In such a normative context, the network of Italian Chambers of Commerce has operated trying to remain in a field of activity different from the one reserved to the PDO/PGI. Therefore, it has kept the principle that the geographical collective mark has to limit itself to photograph the production reality of a food product without entering into demonstrations concerning the relation of causality or derivation between the geographical environment and the qualitative features of the product.

A second challenge arose from the need to conform as much as possible to the European legislation, as well as the legislation of the other countries of the Union, also in view of a possible European registration of the marks in question. About this point it is necessary to note that Italian legislation does not make a difference between a mark that is used to distinguish the products or services of the members of an association from those of others, and a mark that is used to distinguish the products or services that present – for their nature, quality or other elements – some special features from those that do not have such features. Even with some specificity, this distinction is well present, for instance, in the US or UK between “collective mark” and “certification mark”, in France between “marque collective” and “marque collective de certification”, in Spain between “marca colectiva” and “marca de garantía”. In Italy, however, collective marks and guarantee or certification marks converge in the one and only category of “collective mark.”

Given this situation, the need to conform as much as possible to the other European countries has been satisfied through a precise reference to the Community collective mark. In particular, the rules established by article 65 of the EEC Reg.40/94, that regulates the minimum content of the rules governing the use of a Community collective mark, have been considered indispensable and therefore have always been applied: the opening, without discrimination, of the association which is the proprietor of the mark to all the operators whose products originate from the concerned geographical area, the specification of the conditions of membership of the association and the conditions of use of the mark.

The third challenge that has been faced concerns the rigor of the controls. The Italian law establishes that the subject, that holds the function of granting the origin, the nature or the quality of certain products or services, can obtain the registration of a collective mark and allow its use to producers or dealers. Therefore, in Italy, it is possible for the proprietor of the collective mark to carry out the controls on the conformity of the products. In order to ensure greater transparency, the Chambers of Commerce have considered it advisable to establish a separation between control and ownership of the mark. They have therefore decided to assign the control function to a third and independent body, according to the international rule UNI EN 45011.

The above-mentioned characterizations are at the basis of the interventions promoted by the network of Italian Chambers of Commerce for the spread of the collective marks applied to typical products. Clearly, everybody is conscious that the protection level of this instrument is not the same as the one obtained with a PDO/PGI.

In particular, the above-mentioned article 15 of the EEC Dir. 89/104 seems restrictive in the part stating that the geographical collective mark does not authorize its proprietor to forbid third parties the use of signs or indications that designate the geographical origin of the products when they are in conformity with the habitual uses of fairness in the industrial or commercial field. Nevertheless, even with this “prohibition to forbid”, the geographical collective mark is to be considered a strong instrument of protection against imitations and counterfeits.

This is so true that its potentialities have immediately been perceived in different fields from the agricultural and food sectors. In fact, the Italian Chambers of Commerce have been pressed for intervention with the same criteria and procedures in the fields of artistic and traditional handicraft. Therefore, some concrete protection projects have already been realized with geographical collective marks of products such as the “Shepherds of the Neapolitan crib” and the “Marquetry of Sorrento”, as well as some works of artistic handicraft in “Marble of Carrara” or in “Alabaster of Volterra”. Moreover, there are other projects that have been carried out in the fields of textiles, making of stringed instruments, cutlery and wicker works. Notwithstanding the great variety of the fields subjected to intervention, in all the considered situations, the protection of products through collective marks has been correctly perceived not only as a simple defense of the handicraft works, but especially as a defense of the history, tradition and culture of the concerned territories.