Judgment of the Court of Justice of 11 September 2025, Salaparuta (C-341/24).
Acts
Duca di Salaparuta SpA owns several trademarks that include the word “Salaparuta” for wines of class 33, among them:
- Italian trademark no. 511337 SALAPARUTA, registered on July 13, 1989.
- European Union Trademark No. 001302835 SALAPARUTA, registered on October 25, 2000.
These brands are used to market wines that have no connection to the Italian municipality of Salaparuta, located in Sicily.
On February 20, 2006, the Italian authorities recognized the Salaparuta Controlled Designation of Origin (DOC Salaparuta) to designate wines made with grapes from vineyards located in that municipality.
This national protection was extended to the European Union following the Commission's publication of a list of quality wines produced in specified regions (QWPRs), which included the Salaparuta designation. From that moment on, this designation, henceforth referred to as PDO Salaparuta, became part of the electronic register of protected designations of origin and protected geographical indications, acquiring effect throughout the Union from 1 August 2009.
On February 8, 2016, Duca di Salaparuta filed a lawsuit before the Tribunal di Milano requesting the annulment of the DOC Salaparuta and the DOP Salaparuta, alleging that these were misleading designations that interfered with their well-known brand for Salaparuta wines.
On February 16, 2021, the court dismissed the claim, considering the rule of the preeminence of the PDO over the trademark applicable, without prejudice to the fact that the owner could continue to use his trademark under certain conditions.
This sentence was appealed by Duca di Salaparuta and confirmed by the Court of Appeal of Milan by judgment of May 5, 2023, in which it was established that the matter should be resolved in accordance with Regulation no. 1493/1999 Council Regulation of 17 May 1999 establishing the common organisation of the wine market, in force in 2006 when the Salaparuta PDO was recognized. This Regulation conferred automatic PDO protection, within the Union, to the PDOs communicated by the Member States to the Commission and established in its Annex VII, F, point 2, letter b), the primacy of the PDO over trademarks.
Duca di Salaparuta appealed again to the Corte suprema di cassazione, arguing that Regulation No 1493/1999 was not applicable, since, in its opinion, publication in the European Union's e-Bacchus register in 2009 implied the application of the Regulations in force at that time, namely, the Regulation no. 479/2008, Regulation no. 1234/2007 or even the Regulation no. 1308/2013which excluded the protection of a PDO when, given the reputation and notoriety of a previous brand, consumers could be misled about the identity of the wine.
In response to this appeal, the Italian Supreme Court referred two preliminary questions to the CJEU:
- Whether the DOC Salaparuta recognized in 2006 should be considered to maintain its effects and, therefore, Regulation No. 1493/1999 should be applicable, or whether, on the contrary, national protection had been replaced by the DOP Salaparuta throughout the Union, and the Regulations invoked by Duca di Salaparuta should be applied.
- In the event that the 1999 Regulation was deemed applicable, the question was whether the protection regime provided for in that Regulation was exhaustive in resolving cases of coexistence between names and trademarks, or whether the general principle of prohibition of misleading signs could be applied.
pronouncements
The TJ confirms that the Regulation no. 1493/1999 It is the applicable one, since it was in force when the Salaparuta DOC was recognized in Italy in 2006. The publication in the Official Journal of the European Union in 2009 did not imply a new registration, but simply the automatic extension of national protection to the Community level, as a consequence of the communication from Italy to the Commission on the existence of that vcprd.
Consequently, the conflict must be examined in accordance with Annex VII, F.2, second paragraph, of the aforementioned 2009 Regulation, which governs the coexistence of PDOs and trademarks. This provision establishes that the holder of a well-known and registered trademark for wines containing words identical to the name of a region may continue to use it if the registration was made at least 25 years before the official recognition of the geographical name by the Member State and the trademark has been used effectively without interruption.
Furthermore, the Court added that the cancellation of the protection of a wine designation protected under Article 54 of Regulation no. 1493/1999 It was not possible except at the initiative of the Commission, and only until 31 December 2014, when the conditions established in Article 34 of the Regulation no. 479/2008.
As regards the second question, the Court declared that the general principles could not invalidate the conclusion on the exhaustiveness of the regime established in Annex VII, F.2, second paragraph of Regulation No 1493/1999, which governs conflicts with earlier well-known trademarks registered for wines and containing words identical to a PDO.
Comment
The CJEU's ruling is of particular significance, as it precisely defines the legal framework applicable to Protected Designations of Origin and Regulated Grape Products (PDOs) published in the Official Journal of the European Communities pursuant to Article 54(4) and (5) of Regulation (EC) No 1493/1999. The Court clarifies that such publication does not imply the replacement of pre-existing national protection, but rather constitutes an extension of its recognition to the European Union. This interpretation strengthens the legal certainty of holders of PDOs recognized under the pre-2009 regime, guaranteeing the primacy and stability of their rights, which may not be revoked except in truly exceptional circumstances.
Also of great interest is the confirmation, already declared in other judgments such as that of February 27, 2024 (EUIPO/The KAiKai Company Jaeger Wichmann, C-382/21 P), regarding the non-direct applicability of the general principles established in international conventions such as the Paris Convention, the Madrid Agreement, or the TRIPS Agreement, since they do not confer on individuals rights directly enforceable before the courts under Union law. In other words, these general principles do not prevail over the provisions exhaustively set out in Union acts, as is the case here with the Regulations on the common organization of the wine market.
Cristina Velasco, Senior Associate of ELZABURU's Brands area.
