http://ipkitten.blogspot.com/2025/04/no-retroactive-protections-for-well.html
Last week, Advocate-General Campos Sánchez-Bordona delivered his opinion in Case C‑341/24 Duca di Salaparuta. As this Kat previously reported here, the Italian Supreme Court referred questions to the CJEU on conflicts between geographical indications and trade marks for wines. The AG took the view that more recent provisions which protect trade marks with a reputation did not apply retroactively to geographical indications that were registered under the earlier EU regulations.
Background
| Photo by AS Photography |
The case was brought by the Sicilian winery, Duca di Salaparuta, which owns trade marks containing the word “Salaparuta” that were registered in Italy in 1989 and as EU trade marks in 2000. The wine brand has been around since the nineteenth century and its trade marks are well-known.
The dispute concerns 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 and red wine. The window to request the cancellation of the PDO expired on 31 December 2014, but Duca di Salaparuta did not seek cancellation before that deadline.
In 2016, Duca di Salaparuta initiated an 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.
The matter raises questions about the applicability and interpretation of various EU Regulations, so the Italian Supreme Court referred two questions to the CJEU in May 2024.
Question 1 – Applicability of the subsequent regulations
The Salaparuta PDO received national protection in Italy while Regulation 1493/1999 applied. However, several changes occurred before the PDO was registered at the EU level on 8 August 2009. Regulation No 479/2008 and the amendments introduced by Regulation No 491/2009 entered into force seven days after they were published in the Official Journal, but in both cases, the relevant provisions for this dispute were only applicable from 1 August 2009 – just a few days before the EU registration of the Salaparuta PDO.
Importantly for this dispute, if these newer regulations applied to this case, then Duca di Salaparuta would argue that the PDO is invalid on the basis of the provisions like Article 43.2 of Regulation 479/2008 (which had no equivalent provision in the earlier Regulation 1493/1999):
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 first question referred to the CJEU was whether the newer regulations would apply, or whether the above rule was inapplicable to names that already enjoyed national protection prior to unitary European registration being granted, in light of the principle of legal certainty (Case C 120/08, Bavaria).
In his opinion delivered on 3 April 2025, AG Campos Sánchez-Bordona noted that Regulation 1493/1999 laid down a general rule that firmly protected geographical names in respect of any other sign, including earlier signs. This was a strict rule, tempered only by an exception for well-known pre-existing trade marks that were identical to the name of a specified region, who may continue to use that brand name if it meets certain conditions. The AG emphasised that the scope of this coexistence is limited.
The situation changed with the newer regulations, but by delaying their applicability, the EU legislature deliberately avoided an overlapping of regulations. While the date of registration of the Salaparuta PDO (8 August 2009) was after the new regulations became applicable, this was a bit of a red herring. In fact, the Commission’s publication of the name “Salaparuta” was made under Regulation 1493/1999 “reflects the situation on 31 July 2009” – one day before the application of the new regulations – and the PDO applied retroactively from the same date. Therefore, the national and EU level procedures for the recognition of the Salaparuta PDO were governed in their entirety by Regulation No 1493/1999.
Furthermore, the new regulation expressly respects the wine designations previously protected under Regulation 1493/1999. The European legislature stipulated that they would be “automatically protected” under the new regulation. Since the Salaparuta PDO was already protected under that system, the new regulations could not be relied upon to preclude its registration.
Question 2 – Other grounds for coexistence?
In the alternative, the Italian Supreme Court asked the CJEU whether the provisions in Section F of Annex VII to Regulation 1493/1999 exhaust all possible circumstances of coexistence between trade marks and PDOs, or whether the general principle of non-deceptiveness of distinctive signs could be the basis for a situation where a geographical indication might be invalid because it is liable to mislead the public as to the true identity of the wine because of the reputation of an earlier trade mark.
AG Campos Sánchez-Bordona said that “it is not necessary to appeal to a general principle when its embodiment (or ‘positivisation’) has been incorporated into the rule where the application of that rule will determine the fate of the dispute.” In the text of Regulation 1493/1999, the legislature already established a point of equilibrium between the primacy of the public interests underlying the approval of geographical designations for wines and, on the other hand, respect for the private interests of the holders of certain pre-existing trade marks.
AG Campos Sánchez-Bordona also noted that if we apply a general principle of non-deceptiveness to the dispute, that could equally work against Duca di Salaparuta, since it identifies its wines with the toponym of the territory (‘Salaparuta’) in which the trade mark holder itself acknowledges it does not grow the grapes for its wine and has “nothing to do” with that locality.
Moreover, the decision to register the PDO in Italy had been taken 10 years before there was any reaction from Duca di Salaparuta. Duca di Salaparuta argued that its objection was solely to the automatic EU registration, not the national registration. However, the AG took the view that this challenge to the conversion of the Italian registration into a PDO “could be incompatible with the requirements of legal certainty.”
Final Thoughts
AG Campos Sánchez-Bordona’s views align with the earlier rulings of the Court of Milan and the Milan Court of Appeal. On that basis, wines registered before 2009 remain in a different position from other products, since Regulation (EEC) 2081/92 of 14 July 1992 for agricultural products and foodstuffs contained provisions that earlier trade marks with an established reputation were an impediment to registration of geographical indications. There is some appeal to Duca di Salaparuta’s argument that the rules for geographical indications should be applied in a uniformed and systematic fashion across all sectors. But as the AG highlights, such principles can only get you so far when the text of the legislation clearly provides to the contrary.
Now we must patiently await the final word on the matter from the CJEU…
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).