Food is sacred to Italians: they do not eat to live, they live to eat. That is why Italian food is so special.
Apart from ontological considerations, the Italian cuisine market was estimated to be valued at 353 billion Canadian Dollars[1]. Out of this massive number, only 123 billion Canadian Dollars are represented by internal market production or restaurants: about one-third. What about the remaining two-thirds?
As an Italian who studies Intellectual Property, the answer is scary. Most of them come from restaurants all over the world labelled as “Italian”, while a notable segment, more problematic, stems from food production outside Italy purporting to be “Italian”, but not adhering to recognized production techniques and quality benchmarks. This phenomenon is easily observable: in the last four months, I have witnessed dozens of products labelled as “Authentic Italian” in the Safeway or NoFrills racks on the 4th Ave, even though none of them was either produced in Italy or produced using Italian primary foods or techniques (see picture attached).
Food, in the Canadian context, often cannot be copyrighted, trademarked or patented because, as established in class, a recipe is only a set of functional instructions and a list of ingredients. At the same time, the Institut national des appellations d’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al case[2], even though extended the tort of passing off recognising the shared goodwill, stated a very unfavourable principle for the protection of the food market by saying that the word “Champagne” has become “semi-generic”. Following this logic, it is also highly probable that any Italian-sounding food-related has not simply become generic, but has also acquired a very strong secondary meaning. Indeed any product or food service labelled as Italian means “superior quality” or “enhanced palatability”. This concept can be applied to any Italian food reference, such as the word “passata” for sauces or “bolognese” for ragus. The term “pizza” itself is often indicated for food that does not respect the original characteristics. In contemporary computer science vocabulary, it could be said that the Italian cuisine market has become “open source”.
During the IP course lectures, we could observe Johanna Blakely’s arguments on the flourishing of markets where copyright is not applicable. Within her very strong position, she showed how many non-copyrightable markets were much bigger than copyrightable ones[3], and, of course, one of these was the food market. While her perspective offers valuable insights, especially with regard to fashion design development, she does not, of course, consider the implications in the Italian food industry. Indeed, consenting an unrestricted usage of Italian names and denominations causes domestic production to decrease in value in favour of fake labelled and less expensive alternatives. Furthermore, the values of the land associated with authentic food production, akin to the Champagne region in France, are depreciated because of the dilution of their branding caused by the so-called, in Canadian Courts, “genericization”. It is also very important to note that the lands that often denominate the product are the primary assets in a high-level food company.
THE TRADEMARKS ACT
In this regard, the Trademarks Act offers a framework for registering and protecting trademarks, that are “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or certification marks”[4]. A certification mark “means a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to the character or quality of the goods or services, the working conditions under which the goods are produced or the services performed, the class of persons by whom the goods are produced or the services performed, or the area within which the goods are produced or the services performed”[5]. With regard to the area, the Trademarks Act also protects the geographical indication (GI), prescribed as “an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule, as originating in the territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin”[6].
In principle, the Trademarks Act is a robust safeguard against fraudulent and anti-competitive products. However, the application of trademark law to culinary designations presents unravelled complexities, especially when dealing with geographical indications and the persistent threat of “genericization”. The key concept of trademark law is in fact, along with the “use”, the “distinctiveness”, namely the capacity of wares and services to be distinguishable by source. And even though the Institut national des appellations d’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al case[7]made a huge step in accepting the concept of shared goodwill, it is problematic in Canada to associate a single source with a specific group of producers that share the same location and/or production techniques[8]. In Italy, this companies’ grouping system is termed “Consorzio”. This same concept has been reframed many times in the European Union legislation and is now applied across various markets.
The principle of distinctiveness becomes problematic when applied to food names that have achieved widespread usage or association with a particular region or style. Moreover, the Institut national des appellations d’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al case genericization principle does not facilitate protection. This situation creates a paradox: a Canadian “caciocavallo” will be associated with the quality and the freshness of the Campania Region cheese, despite a lack of a whatsoever relation. This secondary meaning, while benefiting the non-Italian producers through association with the nouns, on the other hand generates confusion in the consumer and impedes the establishment of distinctiveness. While I acknowledge my strong critique of the Trademarks Act and Canadian court decisions, it is my contention that the current application of the Act and the jurisprudence of the courts does not adequately reflect its foundational principles, as it can be stated by a brief look on the supermarket shelves.
A COMPARATIVE PERSPECTIVE
The Trademarks Act may offer some paths to protect the food heritage and culture. As noted above, certification marks are used to indicate that goods or services adhere to specific standard criteria, especially with respect to the quality and the origin area. Furthermore, the protected geographical indication serves as the strongest means to identify the regional source of a product. And with delight, I must note that in Annex 6 of the Trademarks Act[9], some specific products have been recognised as protected by the same Canadian Government (e.g., Aceto Balsamico di Modena, Pecorino Romano, et alius). This is the result of the Comprehensive Economic and Trade Agreement (CETA) between Canada and the EU, which was aimed also at strengthening the protection of certain European GIs in Canada[10].
But the result, as observed earlier, remains insufficient. Firstly, Canada recognizes only one geographical indication, while Italy, within the EU legislative framework, utilizes three: “Denominazione di Origine Protetta” (DOP) (Protected Designation of Origin), “Indicazione Geografica Protetta” (IGP) (Protected Geographical Indication), and “Specialità Tradizionale Garantita” (STG) (Guaranteed Traditional Speciality). The administrative procedure to grant the products these indications is also very complex and requires evidence of the strong link between the region and the product and the respect of rigorous standards of quality. Furthermore, innovative processes in food production, even for seemingly simple items like tomato sauce, are frequently patented or maintained as trade secrets (e.g., Nutella). A company’s know-how is considered a valuable asset and receives protection[11].
In conclusion, I would strongly advocate for a Canadian multi-faceted approach that combines a strategic use of trademarks and GIs, along with a different administrative process. While I acknowledge my limitations in proposing a specific design for such a process due to my lack of expertise in Canadian Administrative Law, I believe it should be structured on distinct foundations from those of the EU system. The Trademarks Act remains a vital tool in the fight against counterfeiting and misleading labelling. By leveraging the provisions of the Act, prescribing stronger GI protection, and engaging in consumer collaborative efforts, Italian producers can safeguard their culinary legacy and ensure that Canadian consumers have access to authentic and high-quality Italian food products. The battle is to ensure that the Italian-sounding products are not confused with authentic ones.
[1] Deloitte Food Service Market Monitor 2023
[2] Institut national des appellations d’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al (1987), 60 OR (2d) 316, 16 CPR (3d) 385 (H Ct J), aff’d (1990), 74 OR (2d) 203, 30 CPR (3d) 279 (CA), leave to appeal to SCC refused (1991), 33 CPR (3d) v
[3] https://www.youtube.com/watch?v=zL2FOrx41N0
[4] Trademarks Act, R.S.C., 1985, c. T-13, s. 2
[5] Ibid.
[6] Ibid.
[7] Institut national des appellations d’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al (1987), 60 OR (2d) 316, 16 CPR (3d) 385 (H Ct J), aff’d (1990), 74 OR (2d) 203, 30 CPR (3d) 279 (CA), leave to appeal to SCC refused (1991), 33 CPR (3d) v
[8] This perspective difference from North America to Europe can be explained historically and remains present nowadays also in Business Organization structures. To go into detail, see https://www.sciencedirect.com/science/article/pii/S2212977414000088
[9] Trademarks Act, R.S.C., 1985, c. T-13, Annex 6
[10] CETA, Annex 20-A, Part A
[11] https://ufficiomarchibrevetti.it/2020/11/brevettare-un-prodotto-alimentare-2/
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