Protecting Italian products: are trademarks the right strategy?

A few days ago, there was a thread on twitter about the prosecco consortium winning a trademark dispute with New Zealand vine growers over the name “prosecco” to prevent them from producing sparkling wines made with prosecco grape labelled “Prosecco”.

The grape prosecco only changed its name to Glera, the grape used to make the prosecco wine, following the creation of the Prosecco appellation, but the prosecco grape was and still is grown in other countries, including new Zealand and Australia. However, the appellation, and the protection it grants, are only valid within the EU.

Without the protection granted by the appellation, any wine can be labelled with the grape it is made of, and as we know, this is very common for New World wines, their wines tend to be simply labelled with the name of grape: chardonnay, merlot etc. In the case of the Prosecco Consortium vs New Zealand vine growers, the latter were bottling Prosecco sparkling wine, intended as sparkling wine made with prosecco grapes. Following the trademark victory, New Zealand wineries will not be allowed to label sparkling wine made with Prosecco as “Prosecco”. The Prosecco consortium, to protect its golden goose, is attempting to trademark, the only legal option available, the word “prosecco” on all non EU’s countries where the Prosecco brand is strong.

A few months ago, we received an email from an Italian law firm threatening us with legal actions if we had not removed the word “grana” from our cheese description because the word “grana” had been trademarked by the Parmigiano Reggiano and Grana Padano consortium. Grana is a type of cheese, the protected denomination is Grana Padano, and in the description we were only using the word to explain the type of cheese, no reference to the Grana Padano or were implying anything. We weren’t aware of any trademark either. We decided to remove the word. l am very surprised by the trademarks being granted, if the same approach is followed by other countries and consortiums we could end up with a very limited food dictionary.

It seems that the strategy of trademarking names to protect products it is followed by several Italian consortiums. Instead of promoting their respective products and brands, they are attempting to trademark the different names but by doing so, they fuel the creation of the so called “Italian sounding names”, such as Parmesan or Mozarella. There is a big campaign against Italian sounding name products with plenty of money being spent in legal proceedings all over the world, still, this trademark strategy is backfiring. A bit of Italian nonsense.

If the various consortiums had the right management and skills could easily see that, from a financial and marketing point of view, these “wins” bring little benefit to their members and the same money could be better spent promoting the real products and educating consumers instead of paying thousands to lawyers all over the world to apply and enforce trademarks.