Country
correspondents
The Country correspondents section of World
Trademark Review is a feature in which leading
firms from countries across the globe take a detailed
look at a specific topic affecting trademark owners
Advertising
In this issue the correspondents
consider the complex relationship
between trademarks and
advertising
Italy
The legal boundaries of advertising
in Italy
Studio Legale Jacobacci & Associati
Paola Gelato
Australia
Using trademarks in Australian
advertising
Baker & McKenzie
Ross McLean and Jonathan Flintoft
Mexico
Advertising in Mexico: the IP
law perspective
Uhthoff Gómez Vega & Uhthoff SC
Carlos Trujillo
Benelux
Benelux takes hardline view on
comparative advertising
Steinhauser Hoogenraad Advocaten
Paul Steinhauser and Rens Schrijver
European Union
Advertising regulation in the
European Union
Clifford Chance LLP
Vanessa Marsland
Germany
Supreme Court saves Rainforest
Projects (and emotional advertising)
Jonas Rechtsanwaltsgesellschaft mbH
Kay-Uwe Jonas and Karl Hamacher
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United Kingdom
The fine line between trademark
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infringement and allowable competition
Rouse Legal
Karen Fong and Chris Aikens
United States
Keyword advertising issues
remain unresolved
Brinks Hofer Gilson & Lione
David S Fleming
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November/December 2007 World Trademark Review
51
Country correspondent: Italy
Studio Legale Jacobacci & Associati
The legal boundaries of
advertising in Italy
Two sets of regulatory frameworks govern advertising practices in Italy. One is self-regulatory, the other
legislative. Brand owners looking to promote their products or services in Italy and those advising them need
to be fully aware of both systems
Italy has a complex system of rules
governing advertising practices. Advertisers
must adhere to a self-regulatory procedure
as well as the laws imposed by the Italian
legislature. Both these systems have their
own regulatory bodies, which seek to
prevent misleading advertising while
ensuring that any use of comparative
advertising is fair. This article provides a
brief overview of both the self-regulatory
and legislative frameworks.
Self-regulation
Self-regulation of advertisers is controlled by
the latest edition of the Code of Italian
Advertising Self-Regulation, which dates
from September 5 2007. The self-regulatory
system was established in 1963, with the first
edition of the code being issued on May 12
1966. The code is binding on advertising
agencies and on any party that directly
consents to it by underwriting an advertising
contract which includes a clause accepting
the code. Membership of certain associations
may also require acceptance of the code.
In essence, the code sets out the rules
to which advertising practices must
conform in order to be considered fair and
correct. Under the code, ‘advertising’ means
“any communication aimed at promoting
the sale of products or services, regardless
of the medium used”. The code also
provides a definition of ‘message’, which
means “any type of presentation of a
product to the public, including the
packaging presentation”.
Key rules
The code obliges advertisers to ensure that
the message conveyed is truthful and that
the origin of the advertisement is clear.
Article 2, for example, prohibits ‘misleading
advertising’, underlining that: “any
statement, or representation likely to
mislead consumers, even by means of
omissions, ambiguities or exaggerations that
are not obviously hyperbolical, particularly
regarding the characteristics and the effects
of the product, its price, any free offer, its
conditions of sale, its distribution, the
identity of persons shown, prizes or awards,
has to be avoided”.
The code pays particular attention to
matters of health, safety and the
environment. Article 12 states that
advertising for any products likely to be
harmful to health or the environment must
indicate any such undesirable effects.
Articles 13 and 14, on the other hand,
prohibit advertising that is likely to have a
negative effect on other players in the
market. They prevent:
• the use of imitative advertising likely to
create confusion in the market;
• the exploitation in an advertisement of
the name, trademark, notoriety or
corporate image of another party; and
• advertising that denigrates third-party
companies or products.
Article 15 allows indirect comparison
when useful and made between two goods
or services having the same function, on the
basis of a ‘parity claim’.
Regulatory bodies
The self-regulatory system is monitored by
two bodies: the Review Board and the Jury.
They are coordinated by the Istituto
dell’Autodisciplina Pubblicitaria (IAP), a nonprofit organization responsible for:
• the formulation and updating of the
rules of the Code of Self-Regulation; and
• the appointment of the members of
the Jury.
The Review Board, on request by an
interested party, can advise on whether
60 World Trademark Review November/December 2007
advertising conforms to the rules set out in
the code. It may demand changes to the
advertising or issue a desist order,
preventing the use of the advertisement.
More complex cases may be referred to the
Jury by the Review Board itself or on
application by interested parties.
The Jury is made up of between nine and
15 members chosen by the IAP from a panel of
academics, professionals and information
experts, none of whom should have any
connection with the advertising industry.
Should the Jury decide that a particular
advertisement breaches the code, it will order
its withdrawal. In the case of non-compliance
with a decision, under Article 42 of the code,
the Jury or its president shall order that notice
of non-compliance be given to the public
through media channels specified by the Jury.
The decisions of the Jury are final and
may not be appealed. The code does not
provide for the award of damages.
Legislative regulation
The legislative regulation system is
governed by the following laws:
• Legislative Decree 74/92 on misleading
advertising, as amended by Legislative
Decree 67/2000, in turn amended by EU
Directive 114/2006/EC;
• Legislative Decree 206/2005
implementing the Italian Consumer Code;
• Legislative Decree 145/2007 on
misleading and comparative advertising;
and
• Article 2598 of the Italian Civil Code
concerning acts of unfair competition.
Legislative Decree 74/92 (as amended)
sets out a slightly different definition of
‘advertising’ from that provided for by the
Code of Self-Regulation. Pursuant to the
decree, ‘advertising’ is “any form of message
which is disseminated in any formal manner
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Co-published editorial
in the course of commercial, industrial, craft
or professional activities to promote the sale
of movable, or immovable properties, or to
transfer rights and obligations, in respect of
such property, or to provide services”.
Among other things, the legislative
framework seeks to prevent misleading
advertising and provides a set of rules
governing comparative advertising.
Misleading advertising
The Consumer Code has updated the
definition of ‘misleading advertising’ to
cover any advertisement which “in any way
whatsoever, including its presentation,
deceives or is likely to deceive any natural or
legal person, to which it is directed or which
it reaches and which, by reason of its
deceptive nature, is capable of adversely
affecting, or is likely to injure economic
behaviour, or, for these reasons, injures, or
may injure a competitor”. This definition is
broad and includes the packaging of the
relevant products and the information
contained thereon.
Pursuant to Section 21 of the Consumer
Code, an assessment as to whether an
advertisement is misleading must be based
on the following factors:
• the characteristics of the goods,
including any tests carried out;
• the prices and the supplying conditions
of the goods/services; and
• the advertiser, namely the party
responsible for the advertisement.
The Italian authorities have always been
very strict in ruling against misleading
advertising, especially in relation to socalled ‘credence goods’ (eg, cosmetic
products and food supplements which are
advertised to have exceptional results or
‘miraculous’ effects).
Comparative advertising
The Consumer Code defines ‘comparative
advertising’ as: “any advertising which,
explicitly or by implication, identifies a
competitor, or goods and services offered by
a competitor”.
According to Section 22, comparative
advertising is permitted if it:
• is not misleading and compares, in an
objective way, goods or services meeting
the same needs or intended for the same
purpose and having the same degree of
notoriety; and
• is not likely to create confusion between
the compared products, the advertiser
and the competitor, the compared
trademarks, trade names or other
distinguishing signs.
www.WorldTrademarkReview.com
Paola Gelato
Partner, Studio Legale Jacobacci &
Associati, Turin
[email protected]
Paola Gelato, a member of the Italian Bar,
is a partner and attorney-at-law with
Studio Legale Jacobacci & Associati. She
lectures at the Law Institute and
Biotechnology Department of the
University of Turin and is a tutor of the
World Intellectual Property Organization
(WIPO) post-graduate specialization course
on intellectual property organized by
WIPO and the University of Turin.
Ms Gelato is an IP specialist and
represents many Italian and foreign clients
in relation to chemical, cosmetic and
pharmaceutical trademarks and patents,
as well as in matters of unfair competition
and advertising. She has authored various
articles and commentaries on intellectual
property and is a member of the editorial
board for Contratto e Impresa Europa.
The provisions concerning misleading
advertising and comparative advertising
have recently been amended by Legislative
Decree 145/2007 (implementing EU
Directive 2005/29/EC). The new rules focus
on misleading advertising on goods likely to
harm the health or safety of consumers in
circumstances when the advertising fails to
alert the public as to the possible dangers
posed by the goods. They also strengthen
the provisions in place to protect children
and adolescents from certain types of
advertising.
Regulatory bodies
The Competition and Antitrust Authority
(CAA) established under Legislative Decree
287/1990 is competent to rule on issues
surrounding misleading advertising and
comparative advertising. Its function is to
prevent the use of deceptive and misleading
advertising, which may not only damage
consumers, but also have indirect effects on
competition and possibly distort it. However,
the CAA looks to defend the rights of
consumers as a whole and not necessarily of
individual complainants. Thus, the CAA’s
rulings never lead to an award of damages.
Such remedies can be recovered only by
bringing an action before the civil courts.
Prior to the implementation of Legislative
Decree 145/2007, the CAA did not have direct
power to act on its own initiative. It could act
only following a written complaint from
consumers, organizations and associations, or
competitors. Now, pursuant to Article 8 of the
decree, the CAA may also, on its own
initiative (with the assistance of the Guardia
di Finanza – a special division of the police),
challenge advertising it feels to be unlawful.
Should the CAA find an advertisement
misleading or a comparative message
impermissible, either on its own initiative or
following a written complaint from an
interested party, it shall issue a cease and
desist order to prevent any further use.
The CAA can impose administrative
fines of up to €500,000, depending on the
seriousness and the duration of the offence.
Should the unlawful advertisement pose a
serious danger to the health or safety of the
public, or be likely, whether directly or
indirectly, to reach children, the relevant
fine cannot be less than €50,000.
Advertisers can be hit with further fines
for non-compliance and, in the case of
repeated non-compliance, the CAA may order
the suspension of the advertiser’s activity for
a period of no more then 30 days. In the most
serious cases, the CAA can order the party
responsible for the unlawful advertisement
to publish a rectifying statement.
Appeals against decisions of the CAA
may be brought before the Lazio Regional
Administrative Court within 60 days of the
decision, with further appeal to the Council
of State (Supreme Administrative Court).
Conclusion
When embarking on an advertising
campaign in Italy, trademark owners and
those advising them must bear both the
self-regulatory and legislative systems in
mind. In particular, brand owners
advertising cosmetics or food supplements
must pay special attention to avoid the use
of descriptions that exaggerate the
therapeutic effects of such goods or suggest
that they are comparable to pharmaceutical
products. In addition, all brand owners must
take care when comparing their goods or
services to those of a competitor. WTR
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