Summary
With ruling no. 12563/2024, the Italian Court of Cassation addressed the dispute between Duca di Salaparuta S.p.A., the Ministry of Agricultural Policies, various wine producers, and the Consortium for the Protection of Salaparuta PDO wines. Duca di Salaparuta argued that the registration of the term “Salaparuta” as a national DOC in 2006, and as a European PDO in 2009, conflicted with its well-known "Salaparuta" trademark, which had been used to identify its wines since the 19th century. The appellant claimed the national DOC and European PDO registrations were deceptive and/or made in bad faith. The Court of Cassation deemed it necessary to refer a preliminary question to the European Court of Justice (“CJEU”) to resolve the conflict between well-known trademarks and PDOs under EU law.
Legal Controversies and Background of the Proceedings
In 2016, Duca di Salaparuta sued various wineries in Milan that used the "Salaparuta" label, the Salaparuta PDO Wines Protection Consortium, and the Ministry of Agricultural, Food, and Forestry Policies (the authority that had granted the national DOC registration).
Firstly, the appellant argued that the defendants' use of "Salaparuta" on their labels constituted both trademark infringement and unfair competition. Duca di Salaparuta also sought the annulment of the Italian PDO granted in 2006 and the subsequent EU registration granted in 2009. It claimed these designations were deceptive and/or made in bad faith and, in any case, interfered with its prior trademarks.
In particular, the appellant based its nullity request on Article 43.2 of Reg. (EC) No. 479/08 – essentially reproducing Article 118 duodecies, 2, of Reg. (EC) No. 1234/07 – stating that “A name is not protected as a designation of origin or geographical indication if, due to the renown and reputation of a commercial trademark, such protection could mislead consumers about the true identity of the wine.”
In ruling no. 1384/21, issued on February 16, 2021, the Milan Court upheld the appellant's claims regarding trademark infringement and unfair competition. The Court believed that the defendants' use of "Salaparuta" on labels could mislead consumers about the origin of the wines.
However, the Milan Court dismissed Duca di Salaparuta's request to annul the national DOC and European PDO, as the provision invoked by the appellant – Article 43.2 of Reg. 43.2 (EC) No. 479/08, establishing the primacy of the well-known prior trademark over the subsequent PDO – was not in effect when "Salaparuta" received national DOC protection in 2006.
Duca di Salaparuta appealed the first-instance decision before the Milan Court of Appeal. In ruling no. 1453/23, the Court of Appeal dismissed the appeal, confirming the lower court's decision. The Court of Appeal noted that in this case, it was necessary to apply the transitional rule under Article 51 of Regulation (EC) No. 479/08, providing automatic EU protection for a national origin designation already protected under the previous regulation.
Additionally, the Court of Appeal emphasized that "Salaparuta" had been registered as a national designation of origin under Reg. (EC) No. 1493/1999, which – in section "F," paragraph 2(b) of Annex VII – established a principle giving precedence to the designation of origin over the trademark, even if the latter was prior and contained identical terms, provided that the well-known trademark had been registered at least twenty-five years before the official recognition of the geographical designation by the member state.
The appellant thus appealed the decision before the Court of Cassation, which suspended the proceedings and referred the following two questions to the CJEU:
Conclusions
This decision underscores the need for further clarification on how EU law should balance the interests of well-known trademarks and geographical indications.
