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A cured trademark dispute: After 20-year battle, Prosciutto di Parma name heads for Canadian shelves

In the coming months, Canadians will be able to buy ‘Prosciutto di Parma’ bearing its designation for the first time.

GIUSEPPE CACACE/AFP/Getty Images

About two hours by car north of Tuscany in the Emilia-Romagna region of Italy, is a 2,500-square-kilometre area in the hills of Parma where Prosciutto di Parma is made.

By Italian law, it is the only area where Prosciutto di Parma is made. As a protected designation of origin, the name Prosciutto di Parma is governed by a consortium that allows only hams produced in a specific area, with specific breeds, using specific methods, to be labelled as such.

Dating back to 100 BC, historians have remarked on this ham produced in Parma. According to legend, the breeze from the Versilia coast drifts through the olive trees of the Magra Valley, picking up the fragrance from the chestnut trees before settling in the hills of Parma.

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It's this breeze, the legend states, that makes up the secret ingredient of Prosciutto di Parma, drying the ham to its signature sweetness and making it one of the most popular varieties of Italian prosciutto – its name recognized around the world.

Everywhere, that is, except in Canada. But that's about to change. In the coming months, Canadians will be able to buy Prosciutto di Parma bearing the designation "Prosciutto di Parma" for the first time.

As a result of a decades-long legal fight between the Consorzio del Prosciutto di Parma and Maple Leaf Foods, the former group has, until recently, been barred from using the name "Parma" in Canada. So for the past two decades, they've settled instead on calling their product "The Original Prosciutto."

Among the many changes in the new Comprehensive Economic and Trade Agreement (CETA) between Canada and Europe, is a protection for "geographic indications," such as Prosciutto di Parma.

This clears the path for Italian producers to finally sell the ham using its own name.

Stefano Fanti was born and raised in Parma. Like most of his classmates, he was sent off to school every morning with a prosciutto panino in his backpack. He still eats these sandwiches several times a week – "My wife, my son, we eat prosciutto, bread, that's it."

As general manager of the Consorzio del Prosciutto di Parma, Mr. Fanti represents about 145 prosciutto producers, who produce almost nine million hams each year. About 70,000 of those hams wind up in Canada.

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Mr. Fanti's job is to make sure that any product that bears the name Prosciutto di Parma follows the rules set out by the consortium. Those rules were first created in 1963, and include guidelines on what pigs must be used (Duroc, Large White or Landrace breeds), what the pigs must be fed (whey left over from parmigiano-reggiano production), where it must be produced (no less than five kilometres south of the Via Emilia, and climbing no higher than 900 metres in the Apennine Mountains), and how long it must be aged (at least 12 months).

Mr. Fanti arrived at the consortium straight out of university in the late 1980s, and one of his first tasks was to launch exports to North America. By 1995, they were ready to introduce the product to Canada for the first time.

"We tried to say, 'Prosciutto di Parma has arrived! Dear Canadian consumer, we are here!'" he recalled during a recent trip to Toronto.

But as soon as the first shipment hit grocery shelves, the consorzio received a letter from lawyers at the Mississauga-based Maple Leaf Foods. The letter stated that Maple Leaf was the owner of "Trademark Registration No. TMA179,637," for the name "PARMA." Since 1971, the company had been using the name to sell its own brand of Canadian prosciutto.

"They said we cannot use the name 'Prosciutto di Parma,'" Mr. Fanti said.

The consortium tried at first to negotiate with Maple Leaf. But Maple Leaf wasn't interested in selling the name.

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So, over the next two decades, the two groups fought in court, employing large teams of lawyers to help argue their cases. The fight was heard at the Trademarks Opposition Board, in federal court, and the Federal Court of Appeal. In one of the cases, the consorzio's lawyers hired private investigators to call individual grocery stores in every single province across Canada, in an attempt to prove that the Maple Leaf "Parma" brand was scarcely used.

During that period, Mr. Fanti estimated, the consortium spent between $200,000 and $300,000 each year on legal fees. "The consortium's first task is the protection of the name," Mr. Fanti said. "Even if it was a waste – we took the money, and put it in the dustbin. But it was our duty to fight."

Dan Glover, the most recent McCarthy Tétrault lawyer to represent the consortium, called the fight "a long and tangled history," unusual for how long it dragged on.

"We've literally been through three generations of lawyers at McCarthys dealing with this case," he said.

In an e-mailed statement, a Maple Leaf Foods spokesperson said the company "has proudly invested in and supported our PARMA brand for many years. Years of longstanding use in Canada has made 'PARMA' a distinctive, widely known trademark of Maple Leaf Foods, with substantial brand loyalty and equity among consumers known for its unique quality and product style."

Citing the ongoing legal case, the spokesperson declined to comment further.

Technically, the case has been suspended. About seven years ago, the consortium caught wind of CETA negotiations between Canada and the European Union, and decided to try a different tactic.

Mr. Fanti instead dedicated his energy at lobbying Brussels. "Gentlemen, we have a problem in Canada,'" he recalled telling them.

That tactic proved to be more effective. It wasn't difficult to convince European lawmakers – especially after showing that other food products, including several regional cheeses – would also benefit. The Canadian side, too, seemed open to discussions.

A deal was eventually reached, and CETA officially implemented in September of this year. The agreement requires Canada to protect the use of geographical indications – food products "originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation or other characteristic of the product is essentially attributable to its geographical origin." This agreement will allow both Prosciutto di Parma and Maple Leaf's "Parma" brands to co-exist in Canadian stores.

Producers in Parma are now busy changing their labels and preparing their shipments to Canada. Ham with the official "Prosciutto di Parma" labels should make their way onto grocery shelves over the next few months, Mr. Fanti said.

After the long fight, the consortium manager said he is thrilled that they've reached an agreement. Back in Parma, prosciutto is the region's biggest industry – representing about 4,000 jobs, not to mention tens of thousands of jobs across Italy in pork production.

"For us, this is very important," Mr. Fanti said. "Finally, at least, there is a way to protect the name. Finally, we have the chance to make consumers understand the real thing."

A new version of Canada's Food Guide will be released in 2018. Here's a look at some of the recommendations of the first wartime food rules and how it compares to the most recent guide issued in 2007.
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