Protecting Italian “Made in Italy” trademark: recent Italian Supreme Court judgment
Protection of the “Made in Italy” trademark is provided for pursuant to the following laws:
a) certain Italian law provisions, set forth to protect the “made in” and “Made in Italy” statements by means of the application of criminal and administrative sanctions to the marketing of products in general (food or manufactured goods) which are falsely represented to consumers as products which have been wholly made or produced in Italy:
- Law no. 99/2009 (though abrogated by the Law Decree of 25 September 2009, no. 135);
- certain law provisions of the Law of 24 December 2003, no. 350;
- Law Decree of 25 September 2009, no. 135, converted with amendments into the Law of 20 November 2009, no. 166. (on “Urgent provisions for the implementation of certain EU commitments and for the enforcement of certain judgments issued by the European Court of Justice”);
- Law Decree of 22 June 2012, no. 83 (on “Urgent provisions for the Country growth”), converted with amendments into the Law of 7 August 2012, no. 134;
- Italian Ministry of Economic Development’s regulation no. 124899 of 9 November 2009 (providing for the obligation to specify the origin of the products bearing an Italian mark but manufactured in another State);
- Italian Customs Agency Notice no. 155971 of 30 November 2009 with further relevant instructions to same regard;
- notice no. 173529 of 6 August 2012 relating to the sanctioning power connected to the Made in Italy mark, assigned to the Chambers of Commerce.
b) as it, then, in particular relates to the protection of textiles, shoes and skin products, the following law was approved and passed in Parliament:
- Law of 8 April 2010, no. 55.
As it finally relates to European Law, reference should be made to:
European Customs Code – EU Regulation no. 952/2013;
EU Delegated Regulation no. 2446/2015;
Implementing EU Regulation no. 2447/2015;
EU Delegated Regulation no. 341/2016.
As a summary from all the above cited law provisions and regulations, the “Made in Italy” mark can be in principle affixed on products with regard to which, according to customs rules, their Italian origin can be stated, though also further Italian law provisions applicable thereto must be complied with.
According to such provisions, handcrafted and industrial products can bear the “Made in Italy” origin mark provided that their parts are manufactured in a foreign Country but are subsequently fully assembled in Italy with the aim at obtaining the final products, or if all their parts are produced in Italy and subsequently assembled in a foreign Country, provided however in such latter case that those parts which have been produced in Italy are not subject abroad to any substantial transformation or manufacturing.
Pursuant to Law no. 55/2010, the “Made in Italy” origin mark, as it relates to textiles, shoes and skin products, is exclusively reserved to those finished products whose manufacturing phases have been primarily carried out in Italy, or, if any manufacturing activity has been carried out abroad, the whole relevant manufacturing traceability can be verified.
False and misleading origin statements relating to products can be punished pursuant to article 517 of the Italian Criminal Code: any false statement on the origin of a product is sanctioned in fact by jail of up to two years and a fine of up to Euro 20.000.
Very recently, a Criminal Court of Rome’s order of 18 January 2021, seizing certain products which were bearing the “Made in Italy” mark because of the missing specification of their actual manufacturer’s identity in the documentation relating to those products, has been brought to the examination of the Italian Supreme Court, Criminal Section, pursuant to a petition filed therewith by the relevant trader whose products had been seized and which were marketed on sale in his shop; such trader had been in fact criminally indicted pursuant to article 515 (Commerce Fraud) and 517 (Sale of Industrial Products with False Statements) of the Italian Criminal Code.
After having duly examined the petition filed by that trader to remove or make null and void the seizure of his products ordered by the Criminal Court of Rome, the Italian Supreme Court, Third Criminal Section, issued on 28 April 2021 and published on 20 September 2021 its judgment no. 34669, confirming such seizure and rejecting the trader’s petition because, as it relates to the substance of the case, the seized products were just bearing the "Made in Italy" mark without any precise reference to their manufacturing entity, i.e., the manufacturer who should be responsible for the manufacturing process from any legal, economic and technical viewpoint.
Download Italian Supreme Court judgment no. 34669/2021
Prof. Avv. Salvatore Vitale
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