Culinary Copyrights: The Legal Landscape of Food Design Protection in Italy
Giorgio Rusconi and Omar Cesana of Mondini Bonora Ginevra Studio Legale examine the various legal mechanisms available for protecting intellectual property in the food sector, with a focus on patent law, trade secrets, and copyright law. They detail the criteria for patent eligibility, such as novelty and industrial applicability, and discuss how trade secrets like recipes can be protected. The article also delves into copyright protection for recipes, highlighting key court judgments that have extended such protections.
Companies that heavily invest in innovation, research, and development – including in the food sector – have always faced the challenge of protecting their intellectual creations. Whether it is devising the best way to protect the unique shape of an oil bottle, the distinctive silhouette of a chocolate bar, the original packaging of a crisp bag, or even the layout and concept of a restaurant, protective measures are crucial for guarding against not only slavish imitation and misappropriation of goodwill by association (lookalikes) but also unfair parasitic competition.
Patent Protection for “Innovative” Food Products
The primary and most straightforward method for protecting an innovative product or manufacturing process rests on the laws and regulations governing inventions. These are typically defined as “original solutions to technical problems”.
Specifically, patent protection for an invention, whether it is a product or a process, grants an exclusive right for a period of 20 years. This exclusivity aims to prevent third parties from utilising the invention or to govern its use through agreements and licenses.
For an invention to be eligible for patenting, it must fulfil the following criteria:
- Novelty: The invention must be new and not part of existing technology. In other words, it should not have been made publicly available prior to the patent application date, nor previously disclosed by the same inventor or third parties.
- Inventive step: The invention must not be an obvious solution based on existing technology to an expert in the relevant field.
- Industrial applicability: The invention must be capable of being implemented or utilised in any kind of industry, including agriculture.
In the food sector, patents extend beyond additives, aromas, and extracts. They can also cover new food products or processes for the production, transformation, packaging, and storage of food products. Furthermore, patents in this sector may pertain to food supplements, foods designed for specific medical conditions, and foods fortified with added substances.
A few “recipes” have also been granted patent protection. For example, Italian patent No 1408479, regarding a “Process for the preparation of a food product constituting a base that is intended to be processed at the time of consumption”; European patent No EP2382866 (A1), relating to a “Process for the production of biscuits”; and European patent No EP1695635, regarding a “New type of condiment for pasta, rice and the like, particularly suitable to meet children’s preferences and having a particularly balanced dietetic-nutritional profile”.
Trade Secret Protection
Any company information or technical-industrial know-how that is under the legitimate control of its holder and meets the following requirements is eligible for trade secret protection:
- Secrecy: The information must not be generally known or easily accessible to field experts and operators, taken as a whole or in the precise configuration and combination of its elements.
- Economic value: The information must have economic value due to its secrecy, meaning that it gives its holder a competitive advantage.
- Reasonable measures to maintain secrecy: Reasonable measures must be taken to maintain the secrecy of the information, whether internal (through appropriate procedures among employees) or external to the company.
The lawful holder of such information and know-how is entitled to prevent third parties from acquiring, disclosing to third parties, or using said information without permission, except under the following conditions:
- the holder has given their consent; and
- the third party has independently acquired the information.
In the food industry, many product recipes have remained trade secrets for decades, insofar as they align with disclosure requirements under applicable laws and regulations. These include rules related to labelling and food and drink safety. Examples range from Coca-Cola’s legendary recipe to McDonald’s Big Mac “Special Sauce”. Maintaining such secrets requires a calculated business strategy that, from its inception, encompasses both internal procedures, such as employee training and non-disclosure agreements, and external protocols to mitigate the risk of unauthorised disclosure or use.
Protection of a Recipe Under Copyright Law
Recipes may also be eligible for copyright protection. Article 2 of the Italian Copyright Law lists the categories of works that are eligible for protection, including literary works. Since recipes can be characterised by creative expression, even marginally, in their outer form, they may fall within the scope of literary works.
“This is an evolving area of law that will likely see further development through new and more comprehensive court decisions”.
For instance, the Court of Milan (Judgment No 9763 of 10 July 2013) granted copyright protection to artisan recipes for cured and cooked ham that were published on a website, ruling against the author and publisher of a book who had reproduced these recipes without permission. Other notable judgments have extended copyright protections to:
- a compilation of gastronomic recipes that exhibited an original literary form, therefore meeting the requirements of originality and creativity (Judgment of the Court of Ferrara of 5 April 2000);
- a curated collection of culinary recipes accompanied by anecdotes, thoughts, inspirational quotes, and tips on topics like child-rearing, gardening, and beauty, all of which were included in a domestic diary published annually (Judgment of the Court of Casale Monferrato of 11 November 1996);
- a collection of gastronomic recipes deemed to have outstanding literary value (Judgment of the Magistrate of Ferrara of 9 June 1922; and
- a collection of gastronomic recipes (Judgement of the Magistrate of Venice of 24 April 1969).
This is an evolving area of law that will likely see further development through new and more comprehensive court decisions. Given the growing significance of food design in the wine and food industry, as well as in a culture with a longstanding focus on food and nutrition, this topic will likely continue to attract considerable attention.
Mondini Bonora Ginevra Studio Legale
