1. Introduction

The agri-food sector is one of the vital sectors for the Italian economy and the so-called 'Made in Italy' agri-food industry continues to assert itself on the current economic stage as an absolute strong point, a strength that the Italian agri-food product derives precisely from its intrinsic spendability and visibility on the market, both domestic and international, succeeding in combining the different but fundamental characteristics of taste, tradition and culture.

The fundamental lever for the sector's expansion is certainly its strong export vocation, managing to achieve absolute success in the most diverse markets, markets with very different characteristics and typicalities depending on the case. The most recent reports on the current state of the sector, carried out by numerous think tanks belonging to both trade associations and consumer associations, unanimously emphasise the excellent performance of the Italian food and beverage export trend, especially that involving products universally recognised as undisputed symbols of Made in Italy, to the point that there has been a progressive growth in the sector's degree of international openness at rates that exceed those of our manufacturing industry.

However, despite the enormous success of the Italian agri-food industry on the global market, it is dramatically affected by frequent commercial fraud phenomena such as, for example, counterfeiting and so-called 'Italian sounding', which could weaken both its reputation and economic growth and, consequently, erode its potential turnover. The brand therefore, especially in the agri-food sector, represents not only the identity and origin of the product but also a guarantee of quality.

2. The trademark in agri-food products

A trade mark, according to Art. 7 of the Intellectual Property Code (IPC), may consist of "all signs, in particular words, including names of persons, designs, letters, numerals, sounds, the shape of the product or its packaging, colour combinations or shades, provided that they are suitable:

• to distinguish the products or services of one undertaking from those of other undertakings;
• to be represented in the register in such a way as to enable the competent authorities and the public to determine clearly and precisely the object of the protection conferred on the holder'.

 

It follows then that the trade mark, even in the agri-food sector, needs registration in order to enjoy complete protection against unfair behaviour and, therefore, reduce the risk of problems that could have a direct impact on the business of the company that holds the rights to it. There are three different types of trade mark registration:

• national;
• European;
• international.

 

It is the entrepreneur who chooses the type of registration best suited to his trade mark and the degree of protection he wants to obtain, a choice based not only on a mere territorial assessment of the market in which he operates but also on the product's development prospects.

The trade mark, moreover, in order to be legitimately registered and used by the company must comply with a number of indispensable requirements, such as:

• novelty, in the sense that it must not have been previously used as a trade mark, firm or sign for identical or similar goods or services;
• distinctiveness, i.e. it must be structured in such a way as to allow the precise identification of the goods it marks;
• lawfulness.

 

As far as the temporal validity of the trade mark is concerned, according to the regulations currently in force, it is valid for a period of ten years from the filing of the application and can be renewed every ten years indefinitely; this grants the company holding the rights to the trade mark very strong protection.  In the F&B sector, the parameters by which types of trade marks can be classified are different:

• general or special;
• expressive;
• geographical;
• collective or individual;
• of guarantee or certification;
• of selection or recommendation;
• series or family of brands.

 

3. Relationship between trademarks and qualified geographical indications

Qualified geographical indications, divided into protected designations of origin (PDOs) and territorial geographical indications (IGTs), are governed by the following European regulatory sources:

• Regulation (EU) No. 1151/2012;
• Regulation (EC) 110/2008;
• Regulation (EU) No 251/2014;
• Regulation (EU) No 1308/2013.

 

The above-mentioned indications fall, like trade marks, within the legal framework of intellectual property protection. But what is the relationship between the latter and trade marks in the agri-food context? Article 7(1)(c) of Regulation (EU) 2017/1001 and Article 13(1)(b) of the Industrial Property Code, reveals the existence of a ban on the registration of trademarks made exclusively through the use of signs or indications indicating the geographical origin of the product. The purpose is to protect the consumer who might be led to assess the existence of a direct connection between the qualities and essential characteristics of the product and that particular geographical area. However, economic operators who avail themselves of the use of protected designations of origin and typical geographical indications are allowed to use the collective mark, i.e. that mark which, according to Article 11 of the IPC, 'enables the goods and services of the members of the trade association holding the mark to be distinguished from those of other undertakings not belonging to that association'. The purpose of the collective marks is to provide information to consumers that the producer of that particular good belongs to a specific trade association and, by virtue of that membership, he has the right to use the mark with the indication of the reference territory. Otherwise, the legislation would allow an exclusive right of exploitation of the geographical indication and, consequently, of the economic advantages, in the hands of a single entrepreneur: in fact, it is provided that only legal persons governed by public law and trade associations of manufacturers, producers, service providers or traders may apply for registration, with the express exclusion of corporations. A significant novelty introduced in the Industrial Property Code, in transposition of Directive (EU) 2015/2436, is the clear distinction between collective marks and certification marks, both in terms of the active legitimacy of the applicants and from an objective point of view, and the introduction of an ad hoc discipline for certification marks; art. Art. 11 bis of the IPC in fact provides that the owners of a certification mark may be natural or legal persons, including institutions, authorities and bodies accredited under current certification legislation to guarantee the origin, nature or quality of certain products or services for which the mark is to be registered, provided that they do not carry out an activity involving the supply of products or services of the certified type. It is also provided that a certification mark may consist of signs or indications that may serve in trade to designate the geographical origin of the goods or services. In both cases, the application for registration must necessarily be accompanied by the regulations for use of the marks, with an indication of the controls and sanctions provided for.

Relevant in this sense was the ruling of the italian Highest Court which, in its judgment no. 27194 of 23/10/2019, ruled that "the difference in functions subsisting between trademarks and geographical indications or protected designations of origin does not exclude, in the light of European legislation and case law, the common interest, represented by the use of the geographical name in the context of agricultural and food productions, as a competitive advantage that the indication of origin is capable of guaranteeing to the product, so that the holder of a trademark registered in good faith at a time prior to the protected designation of origin may well continue, despite the subsequent registration of that protected designation, the use of the trademark, pursuant to Article 14(2) of Regulation No 510/2006, where there are no grounds for the mark's invalidity or revocation'.

In any case, according to Article 6, Regulation (EU) 2012/1151, names that have become generic and common, and therefore no longer distinctive of a legal territory-quality, names of a plant variety or an animal breed that are likely to mislead the consumer as to the true origin of the product, as well as names homonymous to others already registered as PDOs or PGIs, cannot be registered as PDOs.

4. Expressive and descriptive marks

Many operators in the agri-food sector do not always proceed with the registration of trade marks made up of signs that are immediately conceptually reconnectable with the products they are intended to distinguish. Such a trade mark, however, lacks the essential requirement of distinctiveness: this is the so-called 'descriptive trade mark', i.e. a trade mark whose function is reduced to the mere description of the goods for which it is adopted. A trade mark may be descriptive from a purely semantic point of view, for example where the meaning leads back, in the immediate perception of the consumer, to the goods marked or their nature. A trade mark may also be descriptive from a graphic point of view, i.e. when a figurative element in it describes the relevant goods or their function. The invalidity of a descriptive trade mark, due to lack of distinctiveness, is specifically provided for in Art. 13 of the IPC.

Another category of trademarks, considered valid by the legislation, is that of so-called "expressive trademarks", i.e. those signs that, even if partially composed of uncommon expressions, have a clear connection with characteristics or functions of the products they distinguish. Expressive trade marks include the particular category of those trade marks that allude to nutritional or health characteristics of the foodstuff. Article 1(3) of Regulation (EC) 1924/2006 provides that "a trade mark, trade name or fancy name appearing on the labelling, presentation or advertising of a foodstuff which may be construed as a nutrition or health claim may be used without being subject to the authorisation procedures provided for in this Regulation, provided that the labelling, presentation or advertising also bears a corresponding nutrition or health claim that complies with the provisions of this Regulation". Still on the subject of expressive trademarks, those particular trademarks that communicate the impression that a given product derives from the processing of ingredients that, in reality, have nothing to do with that good: this is the case attributable to so-called "milk sounding", an operation prohibited throughout the European Union, as also reiterated by the ruling of the Court of Justice of the European Union, 14 June 2017, Case C-422-2016. The reason of this prohibition is to be found in the fact that such names can mislead the consumer about the identity and qualities of a given food, leading them to make purchasing choices based on erroneous perceptions, therefore in contrast with the general principles of information set out in Regulation (EU) 1169/2011.

Lastly, Article 13 IPC provides for the possibility that a trade mark that was originally devoid of the characteristic of distinctiveness may acquire that character following its consistent commercial and advertising use: this is the so-called 'secondary meaning'. Descriptive and expressive trade marks originally lacking in distinctiveness and therefore not susceptible of valid protection, can be rehabilitated by means of their extensive and prolonged use over time, accompanied by a consistent communicative operation through advertising and marketing actions, which gives them the typical effectiveness of distinctive signs and the relative degree of protection.

5. Other types of marks

There are also some particular types of trade marks regulated by both Italian and EU law. These categories are as follows:

• recommendation or selection marks, i.e. marks belonging to parties who use them to communicate that certain third-party products have been selected by them and are therefore recommended to the public;
• trademarks, which identify the party marketing that product. This mark may be added to that of the manufacturer;
• service marks, which distinguish a service;
• trademarks, indicating a particular manufacturer;
• historical trade marks, which can be registered in a special register set up at the Italian Patent and Trade Mark Office at the request of anyone who, as owner or licensee of a trade mark, has used it for at least fifty continuous years to mark goods or services of an enterprise of particular importance. If the conditions laid down by the legislature are met, the applicant may use the "historical mark" logo.

 

author: Dott. Antonino Guarino