Consorzio Del Prosciutto Di Parma v Asda Stores Limited and others: HL 8 Feb 2001

The name ‘Parma Ham’ was controlled as to its use under Italian law, and the associated mark, the ‘corona ducale’, was to be applied to a sale of Parma Ham, including any packaging. Proper Parma Ham was imported and resold through the defendant’s stores, under the name Parma Ham, but without the mark being shown. The claimants asserted that the Italian law was applicable in England through European Law. As a regulation it was of direct effect in UK law without separate implementation, and was intended to create private rights. The packaging was part of the system of guaranteeing the origin of the goods and of protecting the value of the name. The regulation was valid, and enforceable. Nevertheless the question of whether such goods could be sold without the mark was to be referred to the European Court.


Lord Nicholls of Birkenhead, Lord Hoffmann, Lord Hope of Craighead, Lord Clyde, Lord Scott of Foscote


[2001] UKHL 7, [2001] ETMR 53, [2001] 1 CMLR 43, [2002] FSR 3


House of Lords, Bailii


Council Regulation (EEC) No 2081/92 on geographical indications and designations of origin


England and Wales


CitedCutler v Wandsworth Stadium Ltd HL 1949
The Act required the occupier of a licensed racetrack to take all steps necessary to secure that, so long as a totalisator was being lawfully operated on the track, there was available for bookmakers space on the track where they could conveniently . .
CitedConsorzio per la tutela del formaggio Gorgonzola v Kaserei Champignon Hofmeister GmbH and Co KG ECJ 4-Mar-1999
Upon the registration of a PDO (‘protected designation of origin’) national rules ceased to apply and ‘only the legal rules laid down in the Regulation are, together with the Treaty rules, relevant for the purpose of answering the questions referred . .
Appeal fromConsorzio Del Prosciutio Di Parma v Asda Stores Ltd and Another CA 4-Dec-1998
A rule regarding the designation of origin of goods, disallowing the use of an origin name, must be readily ascertainable in the detail of the regulation, in order to be directly applicable. Designations for Parma Ham, were not readily discoverable, . .
CitedFoto-Frost v Hauptzollamt Luebeck-Ost ECJ 22-Oct-1987
Europa Lack of jurisdiction of national courts to declare acts of Community institutions invalid – Validity of a decision on the post-clearance recovery of import duties. Case 314/85. . .
CitedH J Banks and Co Ltd v British Coal Corporation ECJ 13-Apr-1994
The European Commission has exclusive jurisdiction over ECSC treaty disputes. The duty of sincere cooperation imposed the obligation on the national court to mitigate as far as possible in the interests of the Community the risk of a conflicting . .
CitedCommission v Germany ECJ 23-May-1985
The question was asked as to whether Germany had given effect in domestic law to a directive which required the mutual recognition of nursing diplomas. German law conferred no right of recognition upon holders of diplomas from other member states . .
CitedRegina v Minister of Agriculture, Fisheries and Food and Secretary of State For Health, ex Parte Fedesa and Others ECJ 13-Nov-1990
ECJ 1. Community law – Principles – Legal certainty – Protection of legitimate expectations – Prohibition of the use in livestock farming of certain substances having a hormonal action in the absence of unanimity . .
CitedSociete Terrapin (Overseas) Ltd. v Societe Terranova Industrie Ca Kapferer and Co ECJ 22-Jun-1976
The court discussed the doctrine of exhaustion of rights: ‘. . . the proprietor of an industrial or commercial property right protected by the law of a member state cannot rely on that law to prevent the importation of a product which has lawfully . .
CitedBristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
CitedConsorzio del Prosciutto di Parma v Marks and Spencer plc 1990
Italian regulations are not directly enforceable within the United Kingdom. . .
CitedHoffmann La Roche Ag v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse Mbh ECJ 24-May-1977
The court considered the application of the doctrine of exhaustion of rights in the context of trade marks. The exercise of trade mark rights had to take account of and might be restricted by the prohibitions contained in the Treaty of Rome intended . .
CitedGarden Cottage Foods Ltd v Milk Marketing Board HL 1984
In English law a breach of statutory duty, is actionable as such by a private individual to whom loss or damage is caused by a breach of that duty. Lord Diplock said that it was quite unarguable: ‘that if such a contravention of Article 86 gives . .
CitedPfizer Inc v Eurim-Pharm Gmbh ECJ 3-Dec-1981
ECJ The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or final user by enabling him to distinguish without any possibility of confusion . .

Cited by:

Reference FromConsorzio del Prosciutto di Parma and Salumificio S Rita SpA v Asda Stores Ltd and Hygrade Foods Ltd ECJ 20-May-2003
Europa Reference for a preliminary ruling: House of Lords – United Kingdom. Protected designations of origin – Regulation (EEC) No 2081/92 – Regulation (EC) No 1107/96 – Prosciutto di Parma – Specification – . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 31 May 2022; Ref: scu.159106