PDO AND PGI, THE LEGAL PROTECTION IN THREE COUNTRIES:

SPAIN, ITALY AND POLAND

María Carillo Molina (University of Jaeń) Carolina López Medina (University of Jaeń)

Maria Redel (University of Warsaw) Natalia Serwiak (University of Warsaw)

Chiara Simoni (University of Trento) Lara Ubaldi (University of Macerata)

INDEX

1. Definitions of PDO/PGI 2. Procedure of registration – Spain 3. Art. 13 of 1151/2012 – protection 4. Spanish national protection 5. Italian national protection 6. Polish national protection 7. Italian examples

PDO/PGI DEFINITION

Designation of origin is a name which idenfies a product: a)originating in a specific place, region or in exceptional cases, a

country; b)whos quality or characteristics are essentially or exclusively due

to a particular geographical environment with its inherent natural and human factors;

c)the production steps of which all take place in the defined geographical area.

Geographical indication is a name which identifies a product: a)originating in a specific place, region or country; b)whos given quality, reputation or characteristics is essentialy

attributable to its geographical origin; c)and at least one of the production step of which take place in the

defined geographical area.

SPAIN THE PROCEDURE IS LAID DOWN BY ROYAL DECREE NO

1335 OF 2011

Application

-Directly to the Ministry when the application is requested for a PGI or PDO that involve more than one Local Community

- Or to the Local Community whenever the application is requested for a PGI or PDO that involve only a Local Community

The Local Community has the power to send the application to the Ministry

THE PROCEDURE

Publication on the Official Journal of Spain

Or Publication on the Official Journal of the Local Community when the PGI or PDO involve only one Community

The publication is a way of advertising to let the interesed people know thay can file an opposition to the published PGI or PDO

Timing to file an opposition at national level is 2 months since the pubblication but this reference does not take into account the new Reg. No 1151 of 2012

TRANSITORY PROTECTION

According to the Royal Decree No 1335 of 2011

Once the application has been filed to the EU Commission the Spanish Ministry should grant the transitory protection .

REG. (EU) NO. 1151/2012, ARTICLE 13

Registered names shall be protected against:

Any direct or indirect commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploints the reputation of the protected name, including when those products are used as an ingredient;

Any misure, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” or similar, including when those products are used as an ingredient;

Any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outerpackaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to covery a false impression as to its origin;

Any other practice liable to mislead the consumer as to the true origin of the product.

Where a protected designation of origin or a protected geographical indication contains within in the name of a product which is considered to be generic, the use of that generic name shall not be considered to be contrary to points (a) or (b) of the first subparagraph.

Protected desognations of origin and protected geographical indications shall not become generic.

EX OFFICIO PROTECTION – ARTICLE 13(3)

“MS shall take appropriate administrative and judicial steps to prevent or stop the unlawful use of protected PDO and PGI […] that are produced or marketed in that MS.

To that end MS shall designate the authorities that responsible for taking this steps in accordance with procedures determined by each individual MS.

These authorities shall offer adequate guarantees of objectivity and impartiality, and shall have at their disposal the qualified staff and resources necessary to carry out their functions.”

SPANISH NATIONAL PROTECTION

Art.12 Unfair Competition law 3/1991

Art.275 -276 Criminal Code 10/1995

Administrative Protection

Art.18 Consumers Law

SPANISH ADMINISTRATIVE PROTECTION OF THE LOCAL COMMUNITY

The Local communities have somes competences which are settled by the State:

As for istance in agro-food legislation and discipline.

In light of the abovementioned competences the have the power to establish the administratives sanctiones.

ITALY PROTECTION NATIONAL LEGAL BASIC

Criminal Law

Penal Code Civil Protection

Civil Code Code of Consumption/D.lgs 2 August 2007 n.145 Code of Industrial Property

D.lgs 19 November 2004 n.297

Decree 14 October 2013

CRIMINAL LAW

Art. 474: Public danger offence by fraud

Art. 515: Fraud in the trade --> consignment of a different good for origin, provenience, quality in lieu of what declared or negotiated.

Art. 516: Sale of foodstuffs not genuine as genuine → Sale or trade as genuine of foodstuffs that are not genuine.

Art. 517: Sale of industrial product with false signs --> sale or passing intellectual creation or industrial products with names, marks or national or foreign distinctive signs that can mislead the consumer on the origin, provenience or quality.

Art. 517-bis: Aggravating circumstance --> object of the fact is food or beverage which PDO/PGI is protected by law.

Art 517-quater: Counterfeit of PDO/PGI

Counterfeit or alteration of agricultural PDO/PGI Introduction into the territory of the state Hold for sale Sale directly to consumers put anyway in circulation counterfeit PDOs or PGIs.

CIVIL PROTECTION

Civil Code art. 2598

Subject to the provisions that concern the protection of distinctive signs and patent rights, anyone who engages in acts of unfair competition:

Uses names or distinctive signs capable of producing confusion with names or distinctive signs legitimately used by others, or slavishly imitates a competitor’s product, or fulfills by any other means acts likely to cause confusion with the products and the activities of a competitor.

Code of Consumption/D.lgs 145/07

Comparative advertising is lawful when conclude unjustified advantage from the notoriety of a trademark, denomination, other signs or PDO/PGI of other producers.

CODE OF INDUSTRIAL PROPERTY d.lgs 10.02.2005 n. 30

Art. 29 Geographical indications:

Protection is granted to PGI and PDO identifying a country, a region or a place when used to describe a product originating in such place, and whose quality, reputation or characteristics are exclusively or essentially due to the geographical environment of origin, inclusive of inherent natural, human and traditional factors thereof.

Art.30 Protection. the use of geographical indications and of designations of origin is forbidden when:

such use is likely to deceive the public

involve undue exploitation of the reputation of the protected name

use of any means whatsoever in the designation or presentation of a product which indicate or suggest that the same product originates from a place other than the actual place of origin

product possesses the qualities pertaining to the products originating from a place designated by a geographical indication.

Art. 127 Criminal and administrative penalties

Whoever affixes any untrue words or indications on any item, so as to suggest that it is protected by a patent, industrial design, model or topography or that the trademark distinguishing it is registered.

D.LGS 297/2004 Commercial use: - any direct or indirect commercial use of a protected denomination (PDO/PGI) or a distinctive sign o trademark a) equivalent product: - no submission to control - no acquisition of certification of conformity - checked violation of production specification b) non equivalent product --> undue exploitation of the name of PDO/PGI composed, processed or transformed product: name of PDO/PGI in labeling, packaging or advertising Designation a pond presentation of the IG, distinctive sign and trademark: modification; appropriation, imitation or evocation, even if the true origin is indicated or translated or accompanied by expression such as 'style', 'type', 'method', 'as produced in', 'imitation' or similar; use on packaging, advertising, false information and documents, not conforming or misleading indication; any other practice liable to mislead the consumer as to the true origin of the product; use a trademark which reproduces or evokes a registered name; counterfeits, holds or uses the distinctive sign, mark, any seal or symbol; use of expression in advertising and information to consumers from a unauthorized subject who guarantees or affirm the control activities Consorzia protection: 1) use of a protected denomination in the company name and corporate name by a different organization 2) private subject not included in the control system of a DO.

ITALY DECREE 14 OCTOBER 2013

ICQRF is the national authority for protection of Italian PDO PGI, for taking measures to prevent or stop the unlawful use of STG-PDO-PGI symbols on Food produced and marketed in Italy; new, dedicated, website (www.dop-igp.eu ) which allows all European operators to report infringements, thus providing all the Authorities of the MS with an effective tool to protect the denominated products. (Art. 16)

NATIONAL TEMPORARY PROTECTION

From the date of applications' presentation to the Commission the Ministry can ensure a period of temporary protection of the name by decree: - use: only control-subjected operators; - labeling 'under national transitional procedure'; - prohibition of use: symbols and 'PDO/PGI'; - national effect; - end: registration by the Commission or application recall.

POLISH TEMPORARY NATIONAL PROTECTION

Since the positive administrative decision is passed by the Minister of Agriculture the PDO/PGI is protected on the territory of Poland at national level which is called a ”temporary national protection”, which means that only the producer who produces in accordance with the specification is allowed to use the name the registration of which he applied for.

The list of the temporary protected products is held by the Minister of Agriculture.

The ”temporary national protection” expires on the day of registration or on the day of refusal of the registration of PDO/PGI at the European level.

NATIONAL PROTECTION – AFTER THE REGISTRATION 1. The producer who produces according to the requirements of

the specification is allowed to use the registered name of the product.

2. The registered names of products cannot be used in trade if the products are not in conformity with the specification, even if:

- using the name is not aimed at pointing the provenience, - the terms as „in style of”, „a kind of” ect. are used, - the name is used in original language version or its translation

or - the name is used in a misleading way e.g. with untrue

information on the product’s features ( the basic regulation for that special one mentioned above is set up in Polish Act of 16th Feb. 2007 on the Protection of Competition and Consumers).

EX OFFICIO CONTROL

Legal basic – The legal act dated 21st December 2000 on Agricultural ProductsTrade Quality

ustawa z dnia 21.12.2000 r. o jakości handlowej artykułów rolno-spożywczych

- Ex officio control made by the IJHARS (Inspection of

Agricultural Products’ Trade Quality)

CRIMINAL RESPONSIBILITY

The legal act dated 17th december 2004 concerning registration procedure and protection of PDOs and PGIs.

The names are protected by the criminal law since they are under the temporary national protection (which means since the positive administrative decision of Minister of Agriculture is passed and the application is sent to the European Commission).

Both preparation for and illegal use of the names are a subject to following punishments:

- fine,

- restriction of freedom,

- imprisonment up to 2 years (or up to 5 years - if the value of the product is high or the crime is a permanent source of income for the criminal).

If the producer does not fulfill the conditions of the specification, shall be punished with the fine not lower than 4000 PLN (circa 1000 euro).

It is a petty offence.

CONTROL ON THE REQUEST OF A PRODUCER

There is also a control made when the producer requests an authority for checking if his production is in accordance with the specification (IJHARS, certificate entities). It is obligatory when the specification demands this kind of control. The certificate may be withdrawn if the production is not in accordance with the specification and the producer does not change it on demand of the authority within a certain period.

The administrative decision on the obligatory withdrawning of the product from the market/ prohibition of using the name or of introducing the product on the market can be passed.