The research carried out by the University of Milan, under the supervision of Professor Stefania Bariatti, aims at examining the current EC jurisdictional and choice-of-law rules in case of infringement of denominations of origin and geographical indications for agricultural products and foodstuff, protected under Council Regulation (EC) No 510/2006. The perspective chosen is that of their legitimate users, faced with the marketing of counterfeited products or with different form of exploitation of their exclusive right, without considering instead the consumer perspective that will be examined by another research-group.
Once provided an overview of the discipline laid down in Regulation No 510/2006, it has been addressed the characterization of PDOs and PGIs. In fact whether PDOs and PGIs can be regarded as IP rights or at least as rights that can be assimilated to IP rights, or as an alternative if their protection must rely on the laws concerning unfair competition, is quite controversial. Many EU binding sources as well as ECJ case-law supported the characterization of PDOs and PGIs as IP rights. It appears that, notwithstanding their peculiarities, PDOs and PGIs can be regarded as falling within the notion of unitary Community IP rights, in the meaning of Article 8 (2) of the Rome II Regulation, next to Community Trade Mark Regulation, Community Design Regulation and Community Plant Variety Rights Regulation. In particular, the far-reaching protection granted by Article 13, appears to be closely assimilable to the one granted to a reputed trade mark.
Though, Regulation No 510/2006 does not provide for a substantive regulation of the remedies actionable by the right-holders in case of infringement. Neither does it provide for special rules as concerns jurisdiction and applicable law. It is thus necessary to refer to the existing general rule laid down respectively in Brussels I Regulation and in Rome II Regulation. In this respect, the analysis has been carried out from a critical point of view, trying to show some inefficiencies of the current discipline and recalling some recent cases brought before the German and the Spanish courts by application of the Parmigiano Reggiano Cheese Consortium.
As concerns in particular applicable law, reference is to be made to Article 8 (2) of Rome II Regulation, specifically devoted to unitary Community IP rights, among which PDOs and PGIs are to be considered. In these cases the lex leci protectionis principle cannot work as a connecting factor because in these cases the locus protectionis is the whole EU territory and consequently it is not possible to identify a single set of national laws to be applied. Consequently, Article 8 (2) refers to the lex loci commissi delicti as a supplementary conflict-of-laws rule in all those respect not regulated by the relevant Community instrument. It is submitted that the determination of the specific remedies available, among which interim injunctive relief plays a crucial role to secure an effective protection of the rights involved, fall within the scope of the lex loci commissi deliciti as referred by Article 8 (2), not forgetting the minimum harmonization provided by the 2004 IP Enforcement Directive.