"Culatello di Parma" vs. Protected Designation of Origin "Prosciutto di Parma"

Does the average German consumer automatically think of the protected designation of origin "Prosciutto di Parma" when a raw ham is labelled "Culatello di Parma"? Yes, says the Federal Court of Justice (BGH).

An association of Italian manufacturers of Parma ham ("Prosciutto di Parma") took action against a manufacturer of meat products based in Parma, Italy. The manufacturer distributed sliced raw ham under the designation "Culatello di Parma". On the product packaging, in addition to a more detailed description of the product, an Italian flag and a map of Italy were reproduced.

The association considered the use of the product designation "Culatello di Parma" to be an unlawful allusion to the protected designation of origin "Prosciutto di Parma" and asserted, inter alia, claims for cessation of use in court proceedings.

The Regional Court (LG) Cologne upheld the claim; the appeal lodged against this by the manufacturer was unsuccessful (Higher Regional Court (OLG) Cologne,Judgment of 18.1.2019, Az.6 U 61/18). By means of the revision filed, the Federal Court of Justice (BGH) had to deal with the case.

Decision of the Federal Court of Justice (BGH) on the question of protected designation of origin

The Federal Court of Justice (BGH) (Judgment of 12.12.2019, Az I ZR 21/19) has decided that the designation "Culatello di Parma" constitutes an unlawful allusion to the protected designation of origin "Prosciutto di Parma".

For determining the concept of allusion, it is relevant whether the consumer is prompted by a disputed designation to establish a direct mental link to the goods bearing the protected designation of origin. When assessing whether an allusion exists, all pictorial and verbal marks displayed on the products in question must be considered together.

In the case of products that appear similar, it may be assumed that there is an allusion to a protected geographical indication if the commercial designations display phonetic and visual similarity, according to the court.

Knowledge regarding the production history of the ham speciality "Culatello" in the Parma region is not to be expected from German consumers. Rather, the Federal Court of Justice (BGH) established that the normally informed, reasonably attentive and intelligent German consumer, when offered sliced raw ham under the designation "Culatello di Parma", will establish a direct mental link to "Prosciutto di Parma".

Conclusion

The purpose of theprotection of geographical indicationsand designations of origin is to provide consumers with the assurance that goods advertised in this manner possess special characteristics and thus offer a certain quality guarantee. The average German consumer sees in the designation "Culatello di Parma" an unlawful allusion to the protected designation of origin "Prosciutto di Parma", according to the Federal Court of Justice (BGH).