Is it possible to commit a crime using one’s own trademark? The Italian Supreme Court responds

When does the use of a trademark become criminally relevant?

Criminal law protects not only trademarks as distinctive signs but also the truthfulness of the information conveyed to the market.

Article 517 of the Italian Criminal Code is the cornerstone provision, punishing anyone who “offers for sale or otherwise places into circulation works of ingenuity or industrial products with names, trademarks, or distinctive signs — national or foreign — capable of misleading the buyer as to the origin, source, or quality of the work or product.”.

This is not counterfeiting — which concerns the reproduction or imitation of registered trademarks (Article 473 of the Italian Criminal Code) — but rather an offense that penalizes any misleading use of a sign, even when formally legitimate. It is sufficient that the overall message leads consumers to believe, for example, that a product comes from a country, company, or production tradition that has nothing to do with it.

Consumer protection is therefore evident even within criminal law.

However, this is not the only rule protecting not just consumers but also, more broadly, the proper functioning of the market. Indeed, the Italian Industrial Property Code (Legislative Decree 30/2005), Article 127, also penalizes anyone who falsely indicates that a trademark is registered — for instance, by using the ® symbol when it is not actually registered. In this case, the falsity concerns not the geographical origin or quality of the product but the legal status of the trademark itself.

Indicating that a mark is registered conveys to the public an idea of legal protection and reliability that does not exist, thereby distorting fair competition in the same way as a false geographical indication.

Both provisions rest on a common principle: the protection of commercial truth.

Criminal law intervenes when business communication – through the brand or label – crosses the threshold from lawful suggestion into deception. In this sense, the Supreme Court’s decision in the “Swedish Pellet” case fits coherently within a system that protects consumer trust and market transparency.

What happens when a trademark suggests a nonexistent origin?

The case originated from the sale in Italy of wood pellet bags bearing the Swedish flag and the wording “Swedish Pellet,” while the product was actually manufactured in Ukraine and distributed by a Latvian company.

At customs, the goods were seized, and the importer – seeking to clear them for circulation – added the phrase “made extra EU,” believing this corrected the irregularity.

The Salerno Court initially acquitted the defendant, accepting the argument that “Swedish Pellet” was a fanciful trademark belonging to a Latvian company and not an indication of origin. Thus, according to the lower court, there was no element of deception, as it was merely a commercial name without descriptive value.

The Salerno Court of Appeal, however, overturned the ruling, holding that the combination of the Swedish flag and the wording “Swedish Pellet” was capable of misleading consumers about the product’s origin. The absence of any mention of the actual Ukrainian producer and the indication only of the Latvian distributor amplified the misleading effect, making the subsequent addition of “made extra EU” irrelevant.

The Supreme Court, in judgment no. 28501/2025, upheld the conviction, ruling that the use of these signs constituted an offense under Article 517 of the Italian Criminal Code, as it misled consumers regarding the origin and geographical provenance of the pellets.

Geographical or legal provenance? What matters to the Italian Supreme Court

The Italian Supreme Court clarified that the “provenance” of a product – for purposes of criminal liability – is not its geographical origin (the physical place where it was made) but its legal provenance, meaning the link between the product and the entrepreneur who has assumed economic, technical, and commercial responsibility for it.

In other words, what matters is not where the factory is physically located but who conceived, controlled, and guaranteed the product.

This approach reflects the realities of the globalized market. If criminal law protected only geographical origin, any entrepreneur outsourcing production abroad could risk prosecution for “misleading indications” even if the product fully complied with applicable standards and legitimately bore their trademark.

Thus, “legal provenance” identifies the product with the enterprise responsible for the production process, regardless of where it is materially made.

As the Court observed: “The expression ‘Swedish Pellet,’ accompanied by the image of the Swedish flag, in the absence of any indication of the Ukrainian manufacturer, clearly evokes not only geographical provenance but also legal provenance, since the consumer […] is misleadingly led to believe that the product comes from the wood of Swedish forests and from an entrepreneur operating in Sweden […]”.

Finally, the later addition of the phrase “made extra EU” does not suffice to remove the misleading effect if the overall branding still evokes an origin different from the real one.

How to communicate without committing a crime

The “Swedish Pellet” decision serves as a clear warning to producers, distributors, and branding agencies.

Those who place products on the market using trademarks that evoke places, traditions, or territorial qualities must ensure that such references are neither false nor ambiguous concerning the actual origin.

Therefore, it is always advisable to:

• verify consistency between the trademark and the true origin of the product;
• avoid geographical indications unless there is a real productive, commercial, or licensing link with the area evoked;
• ensure that labeling and packaging convey clear information about origin, without being contradicted by graphic elements;
• train sales and marketing personnel on the correct use of trademarks and on product communication abroad.

The judgment reaffirms that criminal law protects market fairness, not only consumer rights. Even a lawfully registered trademark may entail criminal liability if its overall communicative impact creates an actual or potential deception regarding the product’s origin.