Last month, the Corte Suprema di Cassazione (the Italian Supreme Court) considered a matter concerning conflicts between trade marks and geographical indications for wines. The case, which concerned the Salaparuta PDO from Sicily, exposed some interpretative issues and has prompted a referral of two preliminary questions to the Court of Justice of the European Union (CJEU).


More wine cases for the CJEU.
Image from Pixabay.

The dispute concerned the geographical indication “Salaparuta” for Sicilian wine, which received protection in Italy in 2006, and then was registered as a Protected Designation of Origin (PDO) by the European Commission in 2009. The denomination can be used for both white wine (made with the grape varieties Ansonica, Catarratto, Chardonnay, or Grillo) and red wine (made with the grape varieties Cabernet Sauvignon, Merlot, Nero d’Avola (Calabrese), or Syrah).

The case was brought by the Sicilian winery, Duca di Salaparuta, which owns trade marks containing the word “Salaparuta” that have been registered since 1989 and become “well-known” for distinguishing products of high renown. The wine brand had been around since the nineteenth century but changed ownership a few times. The window to request the cancellation of the PDO expired on 31 December 2014, but Duca di Salaparuta had not sought cancellation before that deadline.  

The Earlier Decisions

Duca di Salaparuta brought the action against several other wineries, as well as the representative body (the Consorzio di tutela dei vini DOC Salaparuta) and the Ministry of Agricultural, Food and Forestry Policies (which granted the national registration). The other wineries had been using the word “Salaparuta” on their labels. Given the placement, nature and size of the characters that featured the word “Salaparuta” more prominently than the name of the producing winery, Duca di Salaparuta argued that the labels infringed their trade marks and were misleading and deceptive. 

Duca di Salaparuta partially based their argument on Article 43.2 of Regulation (EC) No 479/2008:

A name shall not be protected as a designation of origin or geographical indication where, in the light of a trademark’s reputation and renown, protection is liable to mislead the consumer as to the true identity of the wine.

The provision entered into force on 1 August 2009, and Salaparuta received EU protection a few days later, on 8 August 2009. However, both the Court of Milan and the Milan Court of Appeal held that this provision could not be used to invalidate the Salaparuta PDO, since it was not in force when Salaparuta received national protection in 2006. There were no equivalent protections for the reputation of an earlier trade mark in the previous wine regulation, nor the Italian legislation. 

Duca di Salaparuta appealed, arguing that when pre-existing national GI registrations were converted into EU unitary registrations, they were fully subject to the validity requirements of the 2008 Regulation on wines. They argued that the national registration in 2006 was a mere prerequisite (initial, necessary, but not sufficient) for the unitary registration, which was then subject to refusal by the European Commission.

Furthermore, they noted that the earlier regulations in the agri-food sector did contain such provisions that earlier well-known trade marks represented an impediment to registration of a PDO/PGI (e.g. Article 14.3 of Regulation (EEC) No 2081/9). Duca di Salaparuta argued that, although such a provision was not explicitly included in the earlier wine regulation (No. 1493/1999), it should be interpreted “systematically” in relation to the other unitary regulations to exclude the protection of deceptive signs. They highlighted that the new GI Regulation (No. 2411/2023) supported the argument that there was no justification for making PDO/PGIs for wines exempt from such a fundamental rule as the invalidity of deceptive denominations. 

The Supreme Court’s CJEU Referral

In light of these legal questions, in its judgment handed down on the 10th of April 2024, the Italian Supreme Court referred the following interpretative questions to the CJEU (unofficial translation and summary by this Kat; the case number is not yet available and the referral is not yet available on the Curia website):

Question 1 – Are PDO/PGI registrations in the wine sector for denominations that predate Regulation 1234/2007 subject to an impediment to registration if an earlier trade mark, due to its notoriety and reputation, would make the PDO/PGI deceptive (in the sense that “the protection could mislead the consumer as to the true identity of the wine” per Article 43.2 of Regulation 479/2008), and therefore excluded from protection? Or is this rule inapplicable to denominations already benefiting from national protection prior to EU unitary registration, applying the principle of legal certainty (Case C 120/08, Bavaria)?

[Merpel reminds readers that the Bavaria case was discussed by the IPKat here, but in short, involved a conflict between a trade mark for the word ‘Bavaria’ (owned by a Dutch brewer) and the PGI ‘Bayerisches Bier’. The CJEU noted that “the principle of legal certainty precludes a European Union measure from taking effect from a point in time before its publication, but it may exceptionally be otherwise where the purpose to be achieved so demands and where the legitimate expectations of those concerned are duly respected.”]

Question 2 – If the answer to Question 1 affirms that the earlier wine regulation (No. 1493/1999) applies to the facts of this case, does Annex VII Section F on the conflict between registered trade marks and PDOs/PGIs exhaust all the circumstances of coexistence and protectability of denominations for wines, or is there possibility that a subsequent PDO/PGI may be invalidated if it may mislead the public as to the true identity of the wine due to the reputation of an earlier brand, by virtue of the general principle of non-deceptiveness of distinctive signs?

We will wait to see how the CJEU answers these questions. In the meantime, this Kat will ponder these legal questions over a glass of undisclosed origin wine – saluti!

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