Official Journal of the European Union

C series

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C/2024/4955

19.8.2024

(Case C-341/24, Duca di Salaparuta)

(C/2024/4955)

Language of the case: Italian

Referring court

Parties to the main proceedings

Applicant: Duca di Salaparuta SpA

Defendants: Ministero dell’Agricoltura, della Sovranità alimentare e delle Foreste, Consorzio volontario di tutela dei vini DOC Salaparuta, Baglio Gibellina Srl, Cantina Giacco Soc.coop. agricola, Madonna del Piraino Soc. coop. agricola

Questions referred

1.Are PDO/PGI registrations, in the wine sector, of designations that existed prior to Regulation (EC) No 1234/2007 – subsequently replaced by Regulation (EC) No 1308/2013 – such as, in particular, the PDO ‘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 (EC) No 479/2008, recte [Article] 118k of Regulation (EC) No 1234/2007 (then Article 101, [paragraph 2,] of Regulation (EU) 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 (Court of Justice, judgment of 22 December 2010, Case C-120/2008, [Bayerischer Brauerbund]), 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 (EC) 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 [paragraph] 2(b) of Annex VII to that regulation?

2.If the answer to the first question affirms the necessary application of Regulation (EC) 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 (EC) 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?

Council Regulation (EC) No 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) (OJ 2007 L 299, p. 1).

Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671).

Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine, (OJ 1999 L 179, p. 1).