Abstract
Can a trademark consisting of an Italian first name and surname lead consumers to believe that a product was manufactured in Italy, even when it does not bear the words “Made in Italy”?
In Order No. 20226 of 23 June 2022, the Italian Supreme Court (Corte di Cassazione) clarified that even a lawfully registered trademark may constitute a misleading indication of origin if the manner in which it is used leads consumers to believe that a product is Italian without providing sufficiently clear information about its actual origin. The ruling also illustrates why, in certain circumstances, the presence of a “Made in China” label may not be sufficient to prevent the imposition of an administrative penalty.
Why was the origin of Chinese-made footwear bearing an Italian trademark challenged?
The dispute arose from the marketing of footwear manufactured in China under the trademark “Luca Stefani”, consisting of a distinctly Italian first name and surname.
Following an inspection by the Italian Customs Agency, the Florence Chamber of Commerce alleged that the importing company, Domolux Group Srl, had used the trademark in a manner likely to lead consumers to believe that the footwear was of Italian origin.
Consequently, in 2013, an administrative order was issued requiring the company to pay a fine of €170,000.
The company challenged the decision and initially obtained a favourable ruling from the Florence Court of Appeal. The appellate judges considered trademarks and the geographical origin of products to be separate and independent concepts. In their view, businesses are free to choose the names under which their products are marketed, and the use of an Italian name does not necessarily imply that the goods were manufactured in Italy.
The Court of Appeal also noted that the words “Made in China” appeared inside the shoe uppers, while no explicit statements indicated that the products were of Italian origin.
The Florence Chamber of Commerce subsequently appealed to the Supreme Court, arguing that the trademark “Luca Stefani”, particularly in the footwear sector, could evoke Italy’s established tradition of shoemaking in the minds of consumers.
In its Order No. 20226 of 23 June 2022, the Supreme Court upheld the appeal, quashed the contested judgment and remitted the case to the Florence Court of Appeal.
When does an Italian trademark constitute a misleading indication of origin?
Trademark registration grants its proprietor the right to use a distinctive sign to identify goods or services. However, this right is not unlimited.
A trademark may be legally valid as a distinctive sign while being used in a manner that creates a misleading impression regarding the geographical origin of the goods.
Italian law provides specific safeguards against such practices.
In particular, Article 4, paragraph 49-bis, of Law No. 350/2003 addresses the misleading use of a trademark by its proprietor or licensee where the manner of use is likely to lead consumers to believe that a product is of Italian origin without clear and sufficiently prominent information indicating its foreign origin.
The provision establishes an administrative fine ranging from €10,000 to €250,000.
This administrative offence must be distinguished from the conduct governed by paragraph 49, which addresses false and misleading indications of origin under criminal law, with reference to Article 517 cp.
The distinction is significant because not every misleading use of a trademark necessarily constitutes a criminal offence. The “Luca Stefani” dispute specifically concerned the administrative offence established under paragraph 49-bis.
The legislative framework was subsequently amended by Law No. 75 of 21 April 2026, which modified paragraph 49 in relation to food products and repealed the second sentence of paragraph 49-bis, previously concerning the definition of the actual origin of food products. However, as regards footwear, neither the general prohibition against the misleading use of trademarks nor the applicable administrative penalties were affected by these amendments.
The central question, therefore, is how to determine whether a trademark is capable of misleading consumers.
According to the Supreme Court, this assessment must consider not only the name used as a trademark but also the relevant product sector and the information accompanying the goods.
In the footwear industry, the use of an Italian first name and surname may carry particular significance given Italy’s international reputation for shoemaking.
Consumers may therefore associate such a trademark with Italian manufacturing traditions, even where the product does not expressly bear the words “Made in Italy”.
Nevertheless, the use of an Italian name to identify products manufactured abroad is not inherently unlawful. The decisive consideration is whether the circumstances in which the trademark is used are likely to create a misleading impression regarding the actual origin of the goods.
This issue is closely related to another Supreme Court ruling examined in the article Can Using Your Own Trademark Constitute a Criminal Offence? The Supreme Court’s Answer, which concerned a trademark suggesting a geographical origin different from that of the goods themselves.
Although the two cases involve distinct legal provisions, both decisions demonstrate that the lawful status of a trademark does not preclude the possibility that its use may be unlawful.
Is a “Made in China” label sufficient to avoid an administrative penalty?
One of the most significant aspects of the Supreme Court’s ruling concerns the origin label affixed to the footwear in question.
The shoes did bear the words “Made in China”. However, the indication was printed inside the shoe uppers, in a position where it was particularly difficult to see.
The Supreme Court considered that this was insufficient to communicate the foreign origin of the products clearly and immediately to consumers.
In other words, the mere presence of information concerning a product’s origin is not enough: that information must also be readily perceptible to consumers.
The relevant legislation is intended not only to protect the Made in Italy designation but also to safeguard consumers’ right to receive adequate information about the products they purchase.
Where a trademark may suggest that goods originate in Italy, information identifying their foreign origin must therefore be sufficiently precise and prominent to prevent potential misunderstandings.
In the “Luca Stefani” case, the Supreme Court placed particular emphasis on the combined effect of two circumstances: a trademark capable of evoking Italian manufacturing traditions and an indication of Chinese origin that was difficult to notice.
It was the combination of these elements that made the presentation of the footwear liable to mislead consumers as to its actual origin.
The ruling does not, however, establish a general requirement for information concerning foreign origin to appear in a particular position on the product or its packaging.
Rather, the assessment concerns whether the information provided effectively communicates the product’s origin, taking into account the overall manner in which the goods are presented to the public.
How can companies use Italian trademarks on products manufactured abroad without risking penalties?
The ruling has significant implications for businesses that import or market goods manufactured outside Italy.
Outsourcing production abroad does not, in itself, prevent a company from using an Italian trademark. What must be avoided is a situation in which the trademark, considered together with other elements of the product’s presentation, conveys a misleading impression of its geographical origin.
Before placing foreign-manufactured products on the market, businesses should therefore consider several factors:
- Could the trademark, imagery or other distinctive elements lead consumers to believe that the product originates in Italy?
- Does the product belong to a sector particularly associated with Italian manufacturing traditions?
- Is the information concerning the product’s foreign origin precise, sufficiently prominent and compliant with the requirements of the applicable legislation?
- Could the packaging, advertising or other commercial materials create an impression that differs from the product’s actual origin?
These considerations are particularly important in industries where an association with Italy constitutes a significant element of commercial appeal.
The issue is not confined to the footwear industry. In the food sector, references suggesting Italian origin may similarly influence consumer purchasing decisions, although the distinct regulatory framework applicable to food products must be taken into account.
Accordingly, ownership of an Italian trademark does not entitle a business to disregard the message that its use may convey to consumers.
Companies are not required to abandon trademarks that evoke an association with Italy merely because their products are manufactured abroad. They must, however, ensure that the use of such trademarks does not create a misleading impression regarding the goods’ actual origin.
Ultimately, the distinction between lawful trademark use and a misleading indication of origin may depend on seemingly minor details, including the placement of a label, the visibility of origin information and the broader context in which a product is marketed.
Revisionato da: Margherita Manca
Data di pubblicazione: 11 Novembre 2026
© Canella Camaiora S.t.A. S.r.l. - Tutti i diritti riservati.
È consentita la riproduzione testuale dell’articolo, anche a fini commerciali, nei limiti del 15% della sua totalità a condizione che venga indicata chiaramente la fonte. In caso di riproduzione online, deve essere inserito un link all’articolo originale. La riproduzione o la parafrasi non autorizzata e senza indicazione della fonte sarà perseguita legalmente.
