Consorzio Del Prosecuitto DI Parma (Plaintiffs) Appellants) v Marks and Spencer Plc and Others Respondents)
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE NOURSE,LORD JUSTICE BALCOMBE,LORD JUSTICE LEGGATT |
| Judgment Date | 29 November 1990 |
| Judgment citation (vLex) | [1990] EWCA Civ J1129-13 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | 90/1122 |
| Date | 29 November 1990 |
[1990] EWCA Civ J1129-13
IN THE SUPREME COURT OF JUDCIATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR. JUSTICE MORRITT)
Royal Courts of Justice.
Lord Justice Nourse
Lord Justice Balcombe
Lord Justice Leggatt
90/1122
MR. MICHAEL BURKE-GAFFNEY Q.C. and MR. MARK WEST (instructed by Messrs. Arturo Barone) appeared on behalf of the (Plaintiffs) Appellants.
MR. PETER PRESCOTT Q.C. and MISS FIONA CLARKE (instructed by Messrs. R.J. Ivens and Messrs. Howard Kennedy) appeared on behalf of the (First Defendants) Respondents and the (Second Defendants) Respondents.
This appeal and cross-appeal arise out of interlocutory decisions of Mr. Justice Morritt in what is in substance a passing off action in the extended form first recognised and applied by Mr. Justice Danckwerts in the Champagne case, J. Bollinger v. Costa Brava Wine Co. Ltd. [1960] Ch. 262, and later approved by the House of Lords in the Advocaat case, Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd. [1979] A.C. 731. The trade description which it is here sought to protect is that of Parma ham. It is said that Parma ham which has been sliced and packaged before the point of retail sale cannot lawfully be so described.
The sole plaintiff in the action as at present constituted is Consorzio del Prosciutto di Parma ("the consortium"), an association formed in 1962 and since 1978 a body corporate duly established under the law of Italy. Shortly stated, its objects are to protect and promote the reputation of Parma ham and to supervise its production and the use of the name "Parma ham", for which purpose its powers include a power, on its own behalf and on behalf of its members, to take legal proceedings in Italy or abroad to restrain any illicit or irregular use of the name and to claim damages by way of compensation. The consortium consists of 215 members, all of whom are producers of Parma ham. It claims that in the year ending 31st December 1989 its members produced 7.7 million legs of ham, with a total turnover of approximately £600 million, giving employment in the province of Parma alone to 4,000 people.
The three defendants are all United Kingdom companies. The first, Marks & Spencer plc is the well known retailer of clothes, food and other goods in shops and supermarkets throughout the United Kingdom; the second is an importer of Parma hams; and the third is a company whose business includes the slicing and packaging of hams.
On 4th July 1970 Law No. 506 was enacted in Italy for the purpose of regulating the protection of the denomination of origin of Parma ham, the territorial limits of production and the characteristics of the product. Section 1 provided that the denomination "Parma ham" was reserved exclusively to ham having certain characteristic qualities whose various phases of preparation from salting to the end of seasoning were carried out in a specified production zone within the province of Parma. Section 2 declared that Parma ham was extracted from the flanks of heavy adult swine, excluding boars and sows, who satisfied certain conditions. Section 3 prescribed other specific characteristics of Parma ham, both on and off the bone, as to shape, weight, colour when cut and aroma and flavour. Sections 4 and 5 dealt with production control, the latter part of section 5 being in these terms:
"The Parma ham after the minimum period of curing indicated in section 3, whether whole or without bone or however prepared, must be given to the consumer provided with a particular marking so that the identity and quality of the product shall be permanently verifiable."
Section 13 of the law provided for the issue of a decree of the President of the Republic defining regulations for the enforcement of its provisions. Pursuant thereto, Presidential Decree No. 83 was issued on 3rd January 1978. Article 9 made provision, amongst other things, for the marking of the hams with a special stamp. It included these words:
"The marking shall be applied once or more on the outside of the ham, so that it shall remain visible until the product is totally utilised."
By further secondary legislation promulgated in 1978, the supervisory duties provided for by the law were imposed on the consortium and particular stamps and seals were approved for the purposes of authentication of Parma ham.
Such then was the relevant Italian law in force both on 15th March 1989, when the writ in this action was issued, and on 30th November 1989, when Mr. Justice Morritt gave the decisions under appeal. There has been a subsequent change in the law which may have some bearing on the cross-appeal and to which reference will be made in due course. At this stage it is necessary to emphasise that the practical result of section 5 of the 1970 law and article 9 of the 1978 decree is that, under Italian law, ham can only be sold as Parma ham either (1) as a leg on or off the bone bearing the mark of authenticity or (2) in slices cut from such a leg in the presence of "the consumer", being, as the consortium contends and as we must at this stage assume, the purchaser at the point of retail sale. The second limb of this requirement has a crucial bearing on the principal question which we have to decide.
The background history and the nature of the acts to which the consortium takes objection can be briefly stated, mainly in the learned judge's own words. In 1981 Marks & Spencer started to sell Parma ham in the United Kingdom in pre-sliced packaged form. Since the slicing and packaging were carried out in Italy, it could not, under Italian law, be described as Parma ham. Accordingly, between 1981 and 1988, it was sold by Marks & Spencer in the United Kingdom as "Italian dry cured ham". By the end of that period the sole supplier to Marks & Spencer had become Fratelli Tanzi SPA, a member of the consortium. In 1988 Marks & Spencer decided to import whole Parma hams. The sole supplier has at all times continued to be Fratelli Tanzi SPA. The hams are imported by the second defendant, at whose direction they are delivered to the third defendant. They are all hams which have been taken off the bone and "bricked", that is to say compressed into the shape of a brick and chilled to a temperature of between 0 degrees and 2 degrees centigrade in order to facilitate machine slicing. It is not disputed that they are Parma hams duly bearing the mark of authenticity required by Italian law. Having been delivered to the third defendant, they are sliced and packaged as required by Marks & Spencer for retail sale in their shops and supermarkets.
In December 1988 Marks & Spencer started to sell this pre-sliced ham as Parma ham. They did so in two forms. In the first they sold sliced ham alone in a package which bore labels top and bottom. The main features of the top label were the description "Genuine Parma ham", a pictorial representation of ham in slices and a reproduction of the mark of authenticity in the form of a crown bearing the legend "Parma". The main features of the label on the bottom were the descriptions "Genuine Parma Ham" and then in smaller type "Italian dry cured ham specially selected for Marks & Spencer". Underneath, in still smaller type, further information was given, including "The Parma crown is the official seal of approval." The second form in which the pre-sliced ham was sold was as part of an "antipasto selection" including, as the label proclaimed, "Genuine Parma ham."
No sooner had sales of pre-sliced ham in these two forms begun than objection was taken on behalf of the consortium, a spirited correspondence ensuing between its London solicitor and the legal department of Marks & Spencer. The upshot of that was that since 31st January 1989 Marks & Spencer have removed the reproduction of the Parma crown and the reference to its being the official seal of approval from the top and bottom labels respectively of the first package. But they have refused to go any further. And so the labels on the first package have continued, amongst other things, to describe the contents as genuine Parma ham specially selected for Marks & Spencer and the label on the antipasto selection has continued to describe one of its components as genuine Parma ham. I should add that we were shown an up to date version of the first package with a label on the top not materially different from that used since 31st January 1989. It appears that there is now no label on the bottom, but that omission has by no means mollified the consortium's objections. Indeed, those objections have at all times been maintained, various attempts to find a compromise by means of the introduction of inspection facilities or some form of licensing having come to nought, largely because of a readily comprehensible fear on the part of the consortium that if Marks & Spencer are permitted to sell pre-sliced ham as Parma ham, others will follow suit.
At this stage it is desirable to state that the problem which confronts the consortium in the United Kingdom is one which it has encountered not only here but also in other European countries. In those countries it has been largely, perhaps wholly, successful in restraining the sale of Parma ham except in the manner required by Italian law. However, it appears that in those countries the relevant Italian law is incorporated into the local law by treaty or in some other manner. That of course is something which could have been done here, although it would have needed an act of...
To continue reading
Request your trial