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Italian products are healthy and tasty. Americans love them and look for their favorite ones on the shelves of their neighborhood grocery stores. But in many cases they could run into fakes - counterfeit products with “Italian-sounding” names. They are often nicely packaged with colors and slogans that appeal to the consumer and induce him or her to prefer them to others.

The marketing strategy behind them is often complex and carefully planned. But, needless to say, the quality of these goods is not even comparable to those “Made in Italy”. Still, their production and importation into this country constitutes an great damage for the Italian economy. “Let me mention just two figures.” said the Director of the Italian Trade Commission Dr. Aniello Musella to our microphones. “In 2008 the export of Italian food and wine reached the value of 3.5 billion US dollar while, on the other hand, the total sales of fake Italian products was equal to a total value of 4.5 billion. As you can see, the total profit made with counterfeit goods overcomes that of authentic ones”.
 

What to do to protect both consumers and Italian producers?
 

Donatella Iaricci, Head of the Italian IPR Desk New York-Italian Trade Commission,

introduced the issue during the seminar “Il ‘Made in Italy’ a tavola. Ingredienti salutari, qualità del cibo e tutela giuridica dei prodotti tipici negli USA” (Made in Italy at the table. Healthy ingredients, quality of food and legal protection of typical products in the US), organized by the Italian Trade Commission in occasion of Fancy Food 2009. In her presentation,

“L’assistenza alle imprese italiane per la protezione dei marchi e delle indicazioni geografiche negli USA” (Assisting Italian companies in protecting brands and geographical indications in the US), she explained to us the main differences between the Italian and American legal systems and how these affect an effective protection of Made in Italy in the United States.

Her exhaustive exposition was further enriched by the participation at the seminar of Lorenzo Fabbrini, a lawyer from Orrick, Herrington & Sutcliffe, LLP, an international law firm specialized in transnational matters (including the full range of sophisticated finance and corporate transactions) and litigation (including international dispute resolution, and intellectual property). With his “Panoramica sulla normative dei marchi e dei diritti di P.I. negli USA" (Overview on brand laws and Intellectual Property Rights in the US) he supported Mrs. Iaricci’s presentation offering us a wide prospective of the Intellecual Property Right System in the country, pointing out the two main obstacles that Italian importers face when dealing with the American market and jurisdiction.
 

First of all, certificates of guarantee such as the IGP-Certificato di Indicazione Geografica Protetta (Certificate of Protected Geographical Indication) and the DOP-Certificato d’Origine Protetta (Certificate of Protected Origin) are not recognized in the USA, since geographical names and symbols are considered as mere descriptions of a product. The Certification Mark is the only legal protection of the product in these cases, but it is not as effective as the former. It consists in a word or a symbol used to certify an element or characteristic of the good or service offered. It can be applied, indeed, only when the product acquires peculiar characteristics when entering US territory, thus the protection guaranteed is quite limited.
 

Secondly, as far as the Certificate of Protected Geographical Indication is concerned, in Italy the principle “First to File” is in force. Being the opposite of the “First to Use” applied in America, it prohibits the utilization of expressions such as “blend”, “type”, “style” or evocations and translations of the IGP. Thus in Italy we will never have a description of the kind of “like Parmigiano Regiano”, or “flavorful and sweet as Prosciutto di Parma”, while in the US it can become a powerful, legal, and effective marketing strategy. The two systems are similar only when it comes to generic names, that can’t be applied to products neither in Italy or in the US.
 

The Intellectual Property Right Desk was conceived in response to the needsof Italian investors who intend to export their goods abroad and seek to safeguard them from unfair business practices, particularly with regards to intellectual property violation. It assists Italian producers through various services, especially by providing information and assistance in their very first steps in the new marketplace. By now 14 Desks have been set up to meet this need, and Mrs. Iaricco represents the one in New York, hosted by the Italian Trade Commission. The other thirteen are located in China (3), Taiwan (1), Turkey (1), Russia (1), Republic of South Koreaa (1), Brazil (1), India (2), Vietnam (1), and the United Arab Emirates (1). These are the countries where counterfeit products are manufactured and sold the most.
 

A Coordination Committee, made up of representatives of the Ministry for Economic Development, the Ministry of Foreign Affairs, the Italian Trade Commission and the Italian Customs Office, provides guidelines to the Desks and assists them in the realization of activities in support of “Made in Italy.”
 

“I believe that, even though we have been established only for a very short time, our work has already benefited Italian entrepreneurs in a significant way”, said Mrs. Iaricci.  “We intend to further enhance our commitment entering into cooperation agreements with local entities in the United States in order to strengthen the effectiveness of the current existing system for the protection of Intellectual Property Rights”. 

 

For more information about the activities promoted by the New York Desk please send an email to iprdesk.newyork@ice.it or visit the Italian Trade Commission’s website.