What matters more: well-known wine trade marks or geographical indications?

The Court of Justice of the European Union (CJEU) was asked by complainants in Italy to rule on a dispute between trade marks and a geographical indication (GI) concerning wine from Salaparuta, a wine region/town in Sicily. The word ‘Salaparuta’ was registered as a trade mark in Italy in 1989 and in the EU in 2000; however, the winery was not within the area known as Salaparuta. 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 case concerned well-known trade marks, a concept from the Paris Convention of 1883, recognised in the Madrid Agreement and TRIPS. Yet it is not often argued about in court.

The case facts

The marketing of wines under Salaparuta bears no relation to the local administrative area of Salaparuta in Sicily. Duca di Salaparuta (the winery) is established outside that local administrative area and the grapes used do not come from Salaparuta. The dispute over the name, trade mark, and GI came before a court in Milan, which dismissed the case on the ground that the conflict between the protected name ‘Salaparuta’ and the earlier mark of the same name had to be resolved using a rule that the protected name (GI) should take precedence over the trade mark, without prejudice to the possibility for the holder of that mark to continue to use it under certain conditions.

After several appeals, the case reached the CJEU. The Court had to determine the protection regime that was applicable and how to resolve the conflict between the well-known trade mark registered in 1989 and the wine name, protected at national Italian level in 2006, and at EU level in 2009. The Italian Supreme Court referred two questions to the CJEU:

1. “Are PDO/PGI registrations, in the wine sector, of designations that existed prior to [Regulation No 1234/2007, subsequently replaced by Regulation No 1308/2013] such as … “Salaparuta” PDO-IT-A0795 of 8 August 2009, subject – in terms of the impediment to registration based on an earlier trade mark that, because of its reputation and renown, is liable to render the PDO/PGI in question misleading (“protection is liable to mislead the consumer as to the true identity of the wine”) – to Article 43 [paragraph 2] of [Regulation No 479/2008], recte [Article] 118k of [Regulation No 1234/2007] (then Article 101, [paragraph 2,] of [Regulation No 1308/2013]), which excludes protection of the PDO or PGI where the name in question is liable to mislead the consumer, “in the light of a trade mark’s reputation and renown”, or is that rule inapplicable to names already enjoying national protection prior to unitary European registration being granted, in application of the principle of legal certainty [(judgment of 22 December 2010, Bavaria, C120/08, EU:C:2010:798)], according to which a factual situation must, as a general rule, unless otherwise expressly provided, be assessed in the light of the legal rules in force at the time when the situation obtained, with the consequent application of the earlier regulatory situation as laid down in [Regulation No 1493/1999], and with the conflict between the designation of origin and the earlier trade mark to be resolved on the basis of the provisions of that legislation, laid down in [Section F(2)(b)] of Annex VII to that regulation?
2. If the answer to the first question affirms the necessary application of [Regulation No 1493/1999] to the factual situation at issue in the present case,… do the rules laid down in Section F [of Annex VII] to [Regulation No 1493/1999], which are intended to regulate the conflict between a trade mark registered for a wine or a grape must that is identical to protected designations of origin or geographical indications for a wine, exhaust all possible circumstances of coexistence between the different signs and all possible mechanisms providing protection for the wine names, or does there still exist a possible situation where later PDOs or PGIs might be invalid or not subject to protection, in cases where the geographical indication is liable to mislead the public as to the true identity of the wine because of the reputation of an earlier trade mark, by virtue of the general principle of non-deceptiveness of distinctive signs?”

* The underlined parts are emphasised as the key parts, leading to the key learning from the case.

Takeaways from the case

What this case confirms is the importance of GIs over trade marks in the EU scheme of rights.  It might surprise some, but GIs are intended to get pre-eminence over trade marks. The case confirmed the pre-eminence of a protected wine name over earlier well-known marks containing words identical to that name. Therefore, the EU in Regulation 1493/1999 permitted a name to be registered despite the existence of an earlier well-known mark.

On the second question, the key part of the decision was that a conflict between a wine name protected at national level, subsequently extended automatically at EU level, and earlier well-known marks registered for wines, containing words identical to that name, must be resolved by applying Section F(2) of Annex VII to Regulation No 1493/1999. Then, because the EU intended a name to prevail over trade marks, while providing for a regime under which they may coexist, the GI wins. In this case, the GI name was protected following the 1999 Regulation and got pre-eminence despite the earlier trade mark.

If you have questions or concerns about geographical indications or trade marks, please contact James Tumbridge.