Judgment of the Court of Justice of September 11, 2025, Salaparuta (C-341/24).
Facts
Duca di Salaparuta S.p.A. is the owner of several trademarks that include the word “Salaparuta” for wines in Class 33, including:
- 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 from grapes grown in 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 (vcprd), which included the Salaparuta designation. From that point on, that designation—hereinafter referred to as “Salaparuta PDO”—became part of the electronic register of protected designations of origin and protected geographical indications, taking effect throughout the European Union as of August 1, 2009.
On February 8, 2016, Duca di Salaparuta filed a lawsuit with the Court of Milan seeking the annulment of the Salaparuta DOC and the Salaparuta DOP, alleging that these designations were misleading and interfered with its well-known Salaparuta wine trademark.
On February 16, 2021, that court dismissed the lawsuit, holding that the rule of the PDO’s preeminence over the trademark applied, without prejudice to the owner’s right to continue using its trademark under certain conditions.
This judgment was appealed by Duca di Salaparuta and upheld by the Corte d’Appello di Milano in a judgment dated May 5, 2023, which held that the matter must be resolved in accordance with Council Regulation No. 1493/1999 of May 17, 1999, establishing the common organization of the market in wine, which was in force in 2006 when the Salaparuta DOC was recognized. That Regulation conferred automatic protection as a PDO, within the Union, on quality wines psr notified by the Member States to the Commission and established in Annex VII, F, point 2, subparagraph (b), the primacy of the PDO over trademarks.
Duca di Salaparuta filed another appeal before the Supreme Court of Cassation, arguing that Regulation No. 1493/1999 was not applicable, since, in its view, the publication in the European Union’s e-Bacchus registry in 2009 implied the application of the regulations in force at that time, that is, Regulation No. 479/2008, Regulation No. 1234/2007, or even Regulation No. 1308/2013, all of which excluded the protection of a PDO when, given the reputation and renown of an earlier trademark, consumers could be misled as to the identity of the wine.
In response to this appeal, the Italian Supreme Court referred two questions to the Court of Justice for a preliminary ruling:
- Whether the Salaparuta DOC, recognized in 2006, was still in effect and, therefore, Regulation No. 1493/1999 was applicable, or whether, on the contrary, national protection had been superseded by the Salaparuta PDO throughout the Union, in which case the regulations invoked by Duca di Salaparuta would apply.
- In the event that the 1999 Regulation were deemed applicable, whether the protection regime provided for in that Regulation was comprehensive enough to resolve cases of coexistence between appellations and trademarks, or whether the general principle prohibiting misleading signs should apply.
Statements
The Court of Justice confirms that Regulation No. 1493/1999 is applicable, 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 constitute a new registration, but simply the automatic extension of national protection to the EU level, as a result of Italy’s notification to the Commission regarding the existence of that quality wine psr.
Consequently, the dispute must be examined in accordance with the provisions of Annex VII, F.2, second paragraph, of the aforementioned 2009 Regulation, which governs the coexistence regime between PDOs and trademarks. This provision establishes that the owner of a well-known, registered trademark for wines that contains words identical to the name of a region may continue to use it if the registration was made at least twenty-five years prior to the Member State’s official recognition of the geographical name and the trademark has been effectively used without interruption.
The Court further noted that the cancellation of protection for a wine designation protected under Article 54 of Regulation No. 1493/1999 was not possible except at the initiative of the Commission, and only until December 31, 2014, if the conditions set forth in Article 34 of Regulation No. 479/2008 were not met.
With regard to the second issue, the Court held that the general principles could not undermine the conclusion regarding the exhaustiveness of the system established in Annex VII, Section F.2, second paragraph, of Regulation No. 1493/1999, which governs conflicts with well-known prior trademarks registered for wines and containing words identical to a PDO.
Comment
The Court of Justice’s ruling is particularly significant, as it precisely defines the legal framework applicable to quality wines psr published in the Official Journal of the European Communities in accordance with Article 54(4) and (5) of Regulation 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 reinforces the legal certainty of holders of PDOs recognized under the pre-2009 regime, guaranteeing the primacy and stability of their rights, which cannot be revoked except in truly exceptional circumstances.
Likewise, of great interest is the confirmation—already stated in other rulings, such as that of February 27, 2024 (EUIPO v. The KAiKai Company Jaeger Wichmann, C-382/21 P), regarding the lack of 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 upon individuals rights that can be directly invoked before the courts under Union law. In other words, these general principles do not take precedence over the exhaustive provisions set forth in Union acts, as is the case here with the regulations on the common organization of the market in wine.
Cristina Velasco, Senior Associate in the Trademark Practice Group at ELZABURU.