Olive oil is one of the most renowned Italian food products and Italy is an important international stakeholder in the olive oil trade.

This article first appeared in World Intellectual Property Review, published by Newton Media Ltd.

Unfortunately, it is also one of the most counterfeited products, and in Italy the list of potential fraudulent actions is long. Forgeries and alterations of either geographical indications (GIs) or designations of origin can be an IP infringement and a criminal offence.
The list of fraudulent practices also includes so-called Italian sounding—the production and sale of food containing a false evocation of the Italian character in order to lead consumers to believe that there is an Italian origin. Here, the distinctive qualities of the product are not counterfeited.

The interplay between food legislation and IP law is increasing. To understand this relationship, it is necessary to summarise European and Italian rules on the designation of origin on virgin olive oil labels and packaging.

According to Regulation (EU) No 29/2012, geographical origin is significant in terms of taste and quality in connection only with virgin olive oil, not other categories of olive oil. Since the designation of origin on non-virgin olive oil may lead consumers to believe that quality differences do exist, hence distorting the marketing of this kind of oil, only extra virgin olive oil and virgin olive oil shall bear a designation of origin.

Therefore, olive oil (composed of refined olive oils and virgin olive oils) and olive pomace oil shall not bear such designation.
For single-origin virgin olive oils, the designation of origin shall consist only of a reference to the EU member state, the union or a third country; for blends of olive oils, the designation shall indicate if the olives originate from the EU, from outside the EU, or both.
If a protected designation of origin or GI is involved, it shall be used in accordance with the provisions of the product specification.

EU law
Geographic trademarks and business names applied for before December 31, 1998 under Directive 89/104/EEC or no later than May 31, 2002 under Council Regulation (EC) No 40/94 shall not be considered to be designations of origin. These types of distinctive signs filed/registered after those dates are, on the contrary, considered designations of origin.
On July 1, 2016 Italian Legislative Decree No. 103 of May 23, 2016 entered into force, introducing sanctions for breach of Regulation (EU) No. 29/2012.

According to the Italian Ministry of Agricultural Food and Forestry Policies, it is forbidden to use wordings such as “Italian oil obtained from olives harvested in the Valtiberina” or “oil of Romagna”, even if truthful. It is also forbidden to include symbols, images or illustrations that can evoke a GI that is different from the one indicated on the label.

Moreover, Italian legislation on the description of the origin of extra virgin and olive oil (Law No. 9 of January 14, 2013) provides that a commercial practice is misleading if it evokes a specific geographical area of origin of virgin olive oils not corresponding to the actual geographical origin of the olives.

Also trademarks cannot be registered if they deceive the public over the geographical origin of the raw materials of virgin olive oils. If, as a result of a change of the characteristics of the marked olive oil, a registered trademark is liable to mislead the public concerning the geographical origin, it can be revoked.

Under the above-cited law, the use of geographically deceptive trademarks or the provision of misleading information regarding virgin and extra virgin olive oil is a criminal offence.

The above shows that when it comes to virgin and extra virgin olive oils, there’s a strong connection between agribusiness and IP law. Consequently, IP attorneys must consider this perspective when advising their clients on the registration and use of trademarks for olive oil or extra virgin olive oil. Indeed, the EU’s and member states’ agricultural and food laws should be carefully taken into account when selecting and clearing a trademark for this kind of product.

Elisabetta Guolo is a lawyer and trademark consultant at Bugnion. She can be contacted at: [email protected]
Andrea Cappai is an Italian and European trademark and design attorney at Bugnion. He can be contacted at: [email protected]