Enforcement measures of GIs through sui generis protection, unfair competition and consumer protection law GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013

1) Sui generis protection 2)Unfair competition law 3)Consumer protection law 4)Advertising law GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013

Sui generis protection – GIs as sui generis IP titles? GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 EU Regulations No provisions on enforcement How can the sui generis protection granted by the EU Regulations to PDOs and PGIs enforced in the Member States?

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Sui generis protection – GIs as sui generis IP titles? Italian scenario IP enforcement measures contained in the IP Code - Article 1: “geographical indications and designations of origins” in the list of IP rights to which the Code applies - Articles 29, 30: Definition and scope of protection of geographical indications and designation of origin as “unregistered qualified geographical indications”

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Sui generis protection – GIs as sui generis IP titles? Are the geographical indications that are registered under EU law (PDOs and PGIs) entitled to the tools contemplated by the IP Code although they do not coincide with what established in Articles 29 and 30 IP Code? Many cases were tried by the Italian courts in which PDOs / PGIs were enforced based on the procedural rules of the IP Code (Court of Appeal of Turin, 28 February 2011, Court of Bologna, 24 February 2009, Court of Bologna, 10 January 2007)

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Sui generis protection – GIs as sui generis IP titles? Most cases however also involved (collective) trademarks and the alleged invalidity of trademarks due to conflict with Gis, which would have determined the application of the IP Code anyway. In one case, the court specifically stated that Articles 29, 30 of the IP Code apply to a registered GI: Court of Turin, 10 July 2009.

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Sui generis protection – GIs as sui generis IP titles? In any event, difficult issues to resolve: -Locus standi - Articles 125, IP Code confer enforcement rights on the “right holder”, who is the holder of a PDO / PGI? Producers? (How to apply the “disgorgement of profits clause”?) Associations? Recognised associations (“Consorzi di tutela”)? Could these associations claim damages?

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Unfair competition law Italian scenario Article 2598 Civil Code: - misleading competition - denigration and appropriation of goodwill - unfair commercial practices The misuse or abuse of a PDO / PGI may result in all of these cases. In particular: “unfair commercial practices” each time the boundaries of the scope of protection set forth by the EU Regulations is overcome, with no need to argue or prove confusion in the market.

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Unfair competition law Virtually all cases concerning PDO /PGIs tried in Italy by the civil courts are (also) based on an unfair competition cause of action. Is it easier to resolve the issue of locus standi? (Prerequisites : business and competition relationship) -Producers -Associations (Article 2601 Civil Code) / Not recognized associations (Court of Milan, 17 March 2012))

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Unfair competition law Associations – Do they have a claim of damages? Court of Turin, 10 July 2009 : no

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Unfair competition law What measures are available? Are this more limited than those available for “classical” IP rights? -Injunction (preliminary and permanent) -Preliminary seizure -Damages -Recall of products? -Search orders? -Availability under general provisions, e.g. Article 700 Civil Procedural Code; 2599 Civil Code.

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Unfair competition law In conclusion, when enforcing a registered PDO / PGI in Italy, it is advisable to make reference to multiple causes of action – IP infringement and unfair competition – and add (collective) trademark infringement where possible. The action should ideally be brought by a recognized association (“consorzio di tutela”). The addition of one or more producers as co-defendants should reduce the risk of failure of the damages request.

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Consumer protection law - Directive 2005/29 on unfair commercial practices Misuse or abuse of a PDO /PGI as a practice which conveys “false information and is therefore untruthful or in any way, including overall presentation, deceives or is likely to deceive the average consumer, even if the information is factually correct, in relation to (...) the main characteristics of the product, such as its (...) method (...) of manufacture (...), quantity, (...) geographical or commercial origin(...)” (Article 6, Directive 2005/29/EC). Italian scenario: implemented in the Consumers Code and enforced by the Antitrust Authority (AGCM) - no issue of locus standi - only administrative sanctions (including injunction) – no damages

GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013 Advertising law -Misleading advertising as unfair competition -Ordinary courts -Misleading advertising / denigration under the Advertising Standards Code -Advertising Standards Authority (Giurì) - voluntary arbitration type injunction -Misleading and unlawful comparative advertising under Article 14 of Directive 2005/29 on unfair commercial practices -Antitrust Authority (AGCM) – administrative sanctions

Thank You Daniela Ampollini GEOGRAPHICAL INDICATIONS AND TRADEMARKS: A GLOBAL APPROACH IN THE MARKET PLACE. LATEST DEVELOPMENTS AND BEST PRACTICES: EU, USA, RUSSIA AND CHINA AT A GLANCE. Parma, 15 March 2013