Provisional text

delivered on 3 April 2025 (1)

Case C‑341/24

Duca di Salaparuta SpA

Ministero dell’Agricoltura, della Sovranità Alimentare e delle Foreste,

Consorzio volontario di tutela dei vini DOC Salaparuta,

Baglio Gibellina Srl,

Madonna del Piraino Soc. coop. agricola,

Cantina Giacco Soc. coop. agricola,

Interveners:

Botte di Vino di VH & C. Snc,

Baglio San Vito Srl, in liquidation,

Romeo Vini di CZ & C. Sas

(Request for a preliminary ruling from the Corte suprema di cassazione (Supreme Court of Cassation, Italy))

( Reference for a preliminary ruling – Common organisation of the market in wine – Quality wines produced in specified regions (‘quality wines psr’) – Regulation (EC) No 1493/1999 – Annex VII, Section F – Earlier trade mark enjoying a reputation and renown – Coexistence between signs – Regulation (EC) No 1234/2007 – Applicability – Article 118s – Transitional rules applicable to quality wines psr – Automatic protection – Evaluation, in the application of Section F in Annex VII to Regulation No 1493/1999, of certain general principles – Article 48 of Regulation No 1493/1999 – Duty to ensure that the description and presentation of wine are not incorrect, do not cause confusion and do not mislead the persons to whom they are addressed )

In the dispute giving rise to this reference for a preliminary ruling, Duca di Salaparuta SpA, the holder of various trade marks for wines containing the word ‘Salaparuta’, is seeking a declaration of invalidity of the designation of origin ‘Salaparuta’, which protects wines from vineyards located in that Sicilian locality.

The ‘Salaparuta’ designation of origin was recognised by the Italian authorities, under the Italian ‘denominazione di origine controllata’ (DOC) (controlled designation of origin), in 2006, when the Italian authorities made the decision to assign the name of the local administrative area of Salaparuta (Italy) to the quality wines grown in that area.

In 2009, following this national recognition, the European Commission published the designation of origin ‘Salaparuta’ in the list of quality wines produced in specified regions under Regulation (EC) No 1493/1999. (2) The name was entered in the register of protected designations of origin (PDO) provided for in Regulation (EC) No 1234/2007 (3) and in Regulation (EC) No 479/2008. (4)

Duca di Salaparuta SpA asserts that the PDO ‘Salaparuta’ infringes the industrial property rights corresponding to its own trade marks.

The Italian court of first instance and appellate court dismissed the action brought by Duca di Salaparuta SpA. That party has challenged the appeal judgment before the Corte suprema di cassazione (Supreme Court of Cassation, Italy), which, in turn, has referred two questions to the Court of Justice for a preliminary ruling to determine, in essence, the following:

–Which rules of EU law are applicable to the case. The court would like to know, in particular, whether Regulation No 1493/1999 applies, and on what terms.

–If Regulation No 1493/1999 applies, whether the conflict between a well-known trade mark that has already been registered for wines and a subsequent PDO comprising the same term (‘Salaparuta’) can be resolved on the basis of the general principle that distinctive signs must not be misleading.

I.Legal framework

A.International law

1.Paris Convention for the Protection of Industrial Property

(5)

According to Article 10bis:

‘(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.

(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.

(3) The following in particular shall be prohibited:

1.all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;

2.false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;

3.indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.’

2.Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 14 April 1891

(6)

According to Article 3bis:

‘The countries to which this Agreement applies also undertake to prohibit the use, in connection with the sale or display or offering for sale of any goods, of all indications in the nature of publicity capable of deceiving the public as to the source of the goods, and appearing on signs, advertisements, invoices, wine lists, business letters or papers, or any other commercial communication.’

3.Agreement on Trade-Related Aspects of Intellectual Property Rights

(7)

Article 22 (‘Protection of Geographical Indications’) states as follows:

‘1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

(a)the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;

…’

B.European Union law

1.Regulation No 1493/1999

Article 48 states that:

‘The description and presentation of the products referred to in this Regulation, and any form of advertising for such products, must not be incorrect or likely to cause confusion or to mislead the persons to whom they are addressed, particularly as regards:

–the information provided for in Article 47. This shall apply even if the information is used in translation or with a reference to the actual provenance or with additions such as “kind”, “type”, “style”, “imitation”, “brand” or the like;

–the characteristics of the products, and in particular, their nature, composition, alcoholic strength by volume, colour, origin or provenance, quality, the vine variety, vintage year or nominal volume of the containers,

…’

According to Article 52:

‘1. If a Member State uses the name of a specified region to designate a quality wine psr or, where appropriate, a wine intended for processing into such a quality wine psr, that name may not be used to designate products of the wine sector not produced in that region and/or products not designated by the name in accordance with the provisions of the relevant Community and national rules. This shall also apply if a Member State has used the name of a local administrative area or part thereof or a small locality solely to designate a quality wine psr or, where appropriate, a wine intended for processing into such a quality wine psr.

…’

Article 54 provides:

‘1. Quality wines produced in specified regions (“quality wines psr”) shall mean wines which comply with the provisions of this Title and the Community and national provisions adopted in this connection.

…

4. Member States shall forward to the Commission the list of quality wines psr which they have recognised, stating, for each of these quality wines psr, details of the national provisions governing the production and manufacture of those quality wines psr.

According to the second and third subparagraphs of paragraph 2 of Section F in Annex VII:

‘Moreover, the holder of a well-known registered brand name for a wine or grape must which contains wording that is identical to the name of a specified region or the name of a geographical unit smaller than a specified region may, even if he is not entitled to use such a name pursuant to point 1, continue to use that brand name where it corresponds to the identity of its original holder or of the original provider of the name, provided that the brand name was registered at least 25 years before the official recognition of the geographical name in question by the producer Member State in accordance with the relevant Community provisions as regards quality wines psr and that the brand name has actually been used without interruption.

Brand names complying with the conditions of the first and second subparagraphs may not be invoked against the use of the names of geographical units used to describe a quality wine psr or a table wine.’

2.Regulation No 1234/2007

Article 118k (‘Grounds for refusal of protection’) states as follows:

‘…

2.A name shall not be protected as a designation of origin or geographical indication where, in the light of a trademark’s reputation and renown, protection is liable to mislead the consumer as to the true identity of the wine.’

In accordance with Article 118n (‘Register’):

‘The Commission shall establish and maintain an electronic register of protected designations of origin and protected geographical indications for wine which shall be publicly accessible.’

Article 118r (‘Cancellation’) provides:

‘The Commission may decide, in accordance with the procedure referred to in Article 195(4), at its own initiative or at the duly substantiated request of a Member State, of a third country or of a natural or legal person having a legitimate interest, to cancel the protection of a designation of origin or a geographical indication if compliance with the corresponding product specification is no longer ensured.

…’

Article 118s (‘Existing protected wine names’) states as follows:

‘1. Wine names, which are protected in accordance with Articles 51 and 54 of Regulation (EC) No 1493/1999 and Article 28 of Commission Regulation (EC) No 753/2002 of 29 April 2002 laying down certain rules for applying Council Regulation (EC) No 1493/1999 as regards the description, designation, presentation and protection of certain wine sector products, shall automatically be protected under this Regulation. The Commission shall list them in the register provided for in Article 118n of this Regulation.

(a)the technical files as provided for in Article 118c(1);

(b)the national decisions of approval.

3.Wine names referred to in paragraph 1, for which the information referred to in paragraph 2 is not submitted by 31 December 2011, shall lose protection under this Regulation. The Commission shall take the corresponding formal step of removing such names from the register provided for in Article 118n.

4.Article 118r shall not apply in respect of existing protected wine names referred to in paragraph 1.

The Commission may decide, until 31 December 2014, at its own initiative and in accordance with the procedure referred to in Article 195(4), to cancel protection of existing protected wine names referred to in paragraph 1 if they do not meet the conditions laid down in Article 118b.’

3.Regulation No 479/2008

Article 43 (‘Grounds for refusal of protection’) provides:

‘…

2.A name shall not be protected as a designation of origin or geographical indication where, in the light of a trademark’s reputation and renown, protection is liable to mislead the consumer as to the true identity of the wine.’

Article 46 (‘Register’) states that:

‘The Commission shall establish and maintain an electronic register of protected designations of origin and geographical indications for wine which shall be publicly accessible.’ (8)

Article 50 (‘Cancellation’) provides:

‘It may be decided, in accordance with the procedure referred to in Article 113(2), at the initiative of the Commission or at a duly substantiated request of a Member State, of a third country or of a natural or legal person having a legitimate interest, to cancel the protection of a designation of origin or a geographical indication if compliance with the corresponding product specification is no longer ensured.

…’

According to Article 51 (‘Existing protected wine names’):

‘1. Wine names, which are protected in accordance with Articles 51 and 54 of Regulation (EC) No 1493/1999 and Article 28 of Regulation (EC) No 753/2002, shall automatically be protected under this Regulation. The Commission shall list them in the register provided for in Article 46 of this Regulation.

(a)the technical files as provided for in Article 35(1);

(b)the national decisions of approval.

3.Wine names referred to in paragraph 1, for which the information referred to in paragraph 2 is not submitted by 31 December 2011, shall lose protection under this Regulation. The Commission shall take the corresponding formal step of removing such names from the register provided for in Article 46.

4.Article 50 shall not apply in respect of existing protected wine names referred to in paragraph 1.

It may be decided, until 31 December 2014, at the initiative of the Commission and in accordance with the procedure referred to in Article 113(2), to cancel protection of existing protected wine names referred to in paragraph 1 if they do not meet the conditions laid down in Article 34.’

According to Article 129 (‘Entry into force and applicability’):

‘1. This Regulation shall enter into force on the seventh day following that of its publication in the Official Journal of the European Union.

…

(e)Chapters II, III, IV, V and VI of Title III, Articles 108, 111 and 112 and the corresponding provisions in particular in the relevant Annexes shall apply from 1 August 2009 save as otherwise provided by way of regulation to be adopted in accordance with the procedure referred to in Article 113(1).

…’

4.Regulation No 491/2009

22.Article 1 introduces certain amendments to Regulation No 1234/2007 (set out, for the purposes of the present Opinion, in the preceding paragraphs). (9)

23.Article 3 (‘Repeals and transitional continued applicability’) states as follows:

‘1. … Regulation (EC) No 479/2008 shall be repealed.

References to the repealed Regulation shall be construed as references to Regulation (EC) No 1234/2007 and shall be read in accordance with the respective correlation table set out in Annex XXII to that Regulation.

…’

24.Article 4 (‘Entry into force’) provides:

‘This Regulation shall enter into force on the seventh day following its publication in the Official Journal of the European Union.

It shall apply from 1 August 2009.’

II.Facts, dispute and questions referred for a preliminary ruling

25.The trade mark ‘Salaparuta’ was registered as a national trade mark (No 511337) on 13 July 1989. On 25 October 2000, ‘Salaparuta’ was also registered as an EU trade mark (word mark) for goods in Class 33 of the Nice Classification (alcoholic beverages). (10)

26.In order to designate wines produced using grapes from vineyards located in the Sicilian local administrative area of Salaparuta, the Decree of 8 February 2006 (11) recognised the controlled designation of origin (DOC) ‘Salaparuta’ at national level.

27.The Salaparuta DOC was notified to the Commission, which published it, with effect from 31 July 2009, in the list of quality wines psr in the Official Journal of the European Union of 8 August 2009. (12)

28.That list, published pursuant to Article 54(4) and (5) of Regulation No 1493/1999, shows the date of the legal act of the Member State (Italy) as 8 February 2006.

29.That publication served as the basis for the PDO ‘Salaparuta PDO-IT-A0795’ under the unitary European system introduced by Regulation No 1234/2007. (13)

30.On 8 February 2016, Duca di Salaparuta SpA brought an action before the Tribunale di Milano (District Court, Milan, Italy) seeking, inter alia, that the registration of the PDO ‘Salaparuta PDO-IT-A0795’ and, if necessary, of the national designation of origin, which was recognised as a DOC by the Decree of 8 February 2006, be declared null and void.

31.The applicant argued that the designation was misleading or applied for in bad faith or, in any event, interfered with the earlier trade mark ‘Salaparuta’.

32.By a judgment of 16 February 2021, the first-instance court dismissed the action on the ground that EU law (Regulation No 1493/1999) in force at the time when the PDO ‘Salaparuta’ was recognised nationally did not provide for the possibility of declaring the ‘PDO Salaparuta PDO-IT-A0795’ invalid where an earlier trade mark had a reputation.

33.Duca di Salaparuta SpA appealed that judgment before the Corte d’appello di Milano (Court of Appeal, Milan, Italy), which, by a judgment of 5 May 2023, upheld the ruling at first instance.

34.The Corte d’appello di Milano (Court of Appeal, Milan):

–Confirmed the applicability of the rules laid down in Section F in Annex VII to Regulation No 1493/1999, under which the designation of origin takes precedence over the earlier trade mark.

–Confirmed the applicability of the transitional provision laid down in Article 51 of Regulation No 479/2008, according to which designations of origin already protected under Article 54 of Regulation No 1493/1999 were automatically protected at EU level.

35.Duca di Salaparuta SpA has appealed the judgment of 5 May 2023 on a point of law before the Corte suprema di cassazione (Supreme Court of Cassation), which referred the following questions to the Court of Justice for a preliminary ruling:

‘(1)Are PDO/PGI [(protected geographical indication)] registrations, in the wine sector, of designations that existed prior to Regulation … No 1234/2007 – subsequently replaced by [Regulation 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 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 (Court of Justice, judgment of 22 December 2010, [Bavaria, C-120/08 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 [paragraph] 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?’

III.Procedure before the Court

36.The request for a preliminary ruling was received at the Court on 8 May 2024.

37.Written observations have been submitted by Duca di Salaparuta SpA and the Consorzio volontario di tutela dei vini DOC Salaparuta, along with Madonna del Piraino Soc. coop. agricola and Baglio Gibellina Srl, the Italian and Portuguese Governments and the Commission.

38.The Court did not consider it necessary to hold a hearing.

IV.Analysis

A.The first question referred for a preliminary ruling

39.The referring court wishes to know, in essence, whether the registration of the name ‘Salaparuta’, which took place at national level (as an Italian DOC) in 2006 and at EU level (as a PDO) in 2009, is governed by Regulation No 1493/1999 or by the EU rules applicable from 1 August 2009 (with the relevant consequences deriving from one or other option).

1.Preliminary objections

40.The Italian Government has raised two ‘preliminary objections’ to this question: (a) the national court has no jurisdiction to ‘verify the validity of the European registration of the PDO’; and (b) the recognition of the name ‘Salaparuta’, granted at national level in 2006, was not challenged at the time by Duca di Salaparuta SpA. (14)

41.Neither of these two objections renders the reference for a preliminary ruling inadmissible. With regard to the first objection, I would point out that, in proceedings for a preliminary ruling, it is for the referring court, and not for the parties to the dispute, to determine how its questions are to be framed. (15) In the present case, while it is true that only the Court may declare an act of the EU institutions to be void, the referring court is not asking the Court of Justice to make such a declaration, but merely to establish the legal framework applicable ratione temporis to the dispute so that it can draw the relevant consequences from that framework.

42.With regard to the Italian Government’s second ‘preliminary objection’, it will be for the referring court to assess the impact on the original dispute of the failure by Duca di Salaparuta SpA to challenge (from 2006 to 2016) the recognition of the name ‘Salaparuta’, either as an Italian DOC or as a PDO. I will come back to this point later.

2.Applicable legislation

43.Duca di Salaparuta SpA argues that the regulation subsequent to Regulation No 1493/1999 is relevant in this case. Since the conflict between the trade mark ‘Salaparuta’ and the PDO with the homonymous name arose in the period between 13 June 2008 (the date of entry into force of Regulation No 479/2008) and 8 August 2009 (the date of registration of the PDO ‘Salaparuta’ at EU level), Regulation No 479/2008 – which was replaced from 1 August 2009 by the provisions incorporated into Regulation No 1234/2007 (as amended by Regulation No 491/2009) – must be applied. (16)

44.However, a distinction must be made between the entry into force and the applicability of these texts:

–Pursuant to Article 129 of Regulation No 479/2008, that regulation entered into force seven days after it was published in the Official Journal of the European Union. That same article states, however, that the provisions laid down in Chapters III and IV of Title III would apply from 1 August 2009. It is specifically those provisions that serve as the key reference in the dispute.

–The same applies for Regulation No 491/2009. Article 4 of that text stipulated that it would enter into force seven days after it was published in the Official Journal of the European Union, but that it would be applicable from 1 August 2009.

45.The EU legislature therefore deliberately avoided an overlapping of regulations and set 1 August 2009 as the effective date for the legislative change.

46.On that basis, my Opinion will be developed in two stages, in order to analyse:

–The relationship between the trade mark ‘Salaparuta’ and the PDO of the same name under Regulation No 1493/1999.

–The impact on the recognition of the name ‘Salaparuta’ of the rules introduced by Regulation No 479/2008, which would eventually be included in Regulation No 1234/2007, as amended by Regulation No 491/2009.

3.Quality wines produced in specified regions in the system under Regulation No 1493/1999

47.Quality wines produced in specified regions (‘quality wines psr’) means ‘wines which comply with the provisions of this Title and the Community and national provisions adopted in this connection’ (Article 54(1) of Regulation No 1493/1999).

48.Article 54(4) of Regulation No 1493/1999 requires that Member States forward to the Commission the list of quality wines psr which they have recognised, stating, for each of these quality wines psr, details of the national provisions governing the production and manufacture of those quality wines psr. (17) Paragraph 5 of the same article instructs the Commission to publish the list in the ‘C’ series of the Official Journal of the European Communities.

49.Consequently, this regulation: (a) gave the Member States, subject to the conditions laid down in Regulation No 1493/1999, the responsibility for approving the provisions on the production of quality wines psr and the competence for recognising their wines as quality wines psr; and (b) gave the Commission the task of publishing the list of quality wines psr, once they had been recognised at national level, in the Official Journal of the European Communities.

4.Situation regarding pre-existing trade marks

50.If a Member State gives the name of a specified region to a quality wine psr, Article 52(1) of Regulation No 1493/1999 lays down a general rule that firmly protects that geographical name in respect of any other sign, even if it is an earlier sign.

51.Indeed, according to Article 52(1) of Regulation No 1493/1999, the name of the region in which the quality wine psr is produced ‘may not be used to designate products of the wine sector not produced in that region and/or products not designated by the name in accordance with the provisions of the relevant Community and national rules’. (18)

52.The strictness of this rule is only tempered, for pre-existing trade marks, by the qualification contained in second subparagraph of paragraph 2 of Section F in Annex VII to Regulation No 1493/1999: the ‘holder of a well-known registered brand name for a wine … which contains wording that is identical to the name of a specified region’ may ‘continue to use that brand name’ where it meets the conditions (in particular, relating to time frame and use) (19) stated in that provision.

53.The second subparagraph of paragraph 2 of Section F in Annex VII to Regulation No 1493/1999 therefore provides for a limited exception, allowing the coexistence of a quality wine psr designation with earlier marks that meet certain requirements, even if they contain words identical to the name of the geographical unit.

54.I should repeat that the scope of this coexistence is limited. In addition, in accordance with the final subparagraph of paragraph 2 of Annex VII, ‘brand names complying with the conditions of the first and second subparagraphs may not be invoked against the use of the names of geographical units used to describe a quality wine psr …’.

5.Applicability of Regulation No 1493/1999 to the dispute

55.The procedure for recognition of the ‘Salaparuta’ DOC, which was completed at national level with the Decree of 8 February 2006, took place entirely during the period of application of Regulation No 1493/1999.

56.The subsequent rules, which stem from Regulation No 479/2008, became applicable on 1 August 2009, as I have already mentioned.

57.The Commission’s publication of the name ‘Salaparuta’ as a quality wine psr ‘under Article 54(4) of Regulation … No 1493/1999’ ‘reflects the situation on 31 July 2009’, one day before the application of the new regulations. (20) The PDO ‘Salaparuta PDO-IT-A0795’ is applied retroactively from the same date.

58.It follows from these data that (unless the subsequent legislation has retroactive effect, (21) on which I will comment later) both the procedure for national recognition of the Italian ‘Salaparuta’ DOC and the forwarding of that recognition by the Italian authorities to the Commission and the subsequent publication by the Commission of the abovementioned list were governed in their entirety by Regulation No 1493/1999. That procedure was completed before the new regulation became applicable.

Of the two options set out by the referring court in its first question, therefore, the Court should accept the second, namely the approach advocating the ‘… 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 [paragraph] 2(b) of Annex VII to that regulation’. This view is shared by all the parties (with the exception of Duca di Salaparuta SpA) and the governments that intervened in the request for a preliminary ruling, as well as by the Commission.

6.Impact of the subsequent regulation

60.The foregoing would be sufficient to answer the first question referred for a preliminary ruling, as formulated by the referring court. However, I would like to add a few observations on the impact of the system that has been in place since the new regulatory framework became applicable.

61.In that new regulatory framework, the regime governing the relationship between designations of origin and earlier trade marks undergoes a significant change, to which Duca di Salaparuta SpA has naturally appealed.

62.Indeed, under Article 118k(2) of Regulation No 1234/2007, a name may not be accepted as a designation of origin where protection is liable to mislead the consumer as to the true identity of the wine, having regard to the reputation and renown of a previously registered trade mark. (22)

63.If that (new) provision had been applicable ratione temporis to the dispute and Duca di Salaparuta SpA had relied on it at the appropriate time to challenge the Italian ‘Salaparuta’ DOC and the PDO ‘Salaparuta PDO-IT-A0795’, the court called upon to rule on that challenge would have had to determine: (a) whether the ‘Salaparuta’ trade mark enjoyed a reputation and renown; and (b) whether the coexistence of that trade mark and the identical designation misled the consumer as to the true identity of the wine.

64.However, this new ‘regime’ expressly respects the wine designations previously protected under Articles 51 and 54 of Regulation No 1493/1999. The European legislature stipulated that national quality wines psr would be ‘automatically protected’ under the new regulation. (23)

65.This automatic protection is referred to in recital 36 of Regulation No 479/2008 and in the case-law of the Court concerning wine names in force before 1 August 2009 (as was the case for the name ‘Salaparuta’). (24)

66.In short, the rule in Article 118k(2) of Regulation No 1234/2007 cannot be relied on to preclude wine names already protected before 1 August 2009 under national law and at EU level by virtue of Regulation No 1493/1999.

B.The second question referred for a preliminary ruling

67.The referring court has formulated its second question for a preliminary ruling in the event that (as I suggest) the answer to the first question is in favour of accepting the ‘necessary application’ of Regulation No 1493/1999 to the factual situation at issue in the dispute.

68.In such a case, the referring court wishes to know whether the ‘rules’ laid down in the second subparagraph of paragraph 2 of Section F in Annex VII to Regulation No 1493/1999 ‘… 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’.

69.The ‘general principle’ of ‘non-deceptiveness of distinctive signs’ is inferred by the referring court from provisions of EU law other than Regulation No 1493/1999, (25) or from international agreements to which Duca di Salaparuta SpA has referred in the appeal on a point of law. (26)

70.However, it is not necessary to appeal to a general principle when its embodiment (or ‘positivisation’) has been incorporated into the rule where the application of that rule will determine the fate of the dispute.

71.This is the case with Regulation No 1493/1999. Article 48 of that regulation, which has been repeatedly invoked by Duca di Salaparuta SpA, (27) states that ‘the description and presentation of the products referred to in this Regulation, and any form of advertising for such products, must not be incorrect or likely to cause confusion or to mislead the persons to whom they are addressed …’.

72.I therefore consider it unnecessary to rely on other provisions of EU law or international instruments to assert this ‘general principle’, when Regulation No 1493/1999 itself (the specific provision applicable to the case) has already incorporated that principle. (28)

73.In view of the foregoing, I consider that the appeal to this general principle cannot succeed in relation to the purposes that are relevant here.

74.First, the same legislature that has enshrined this principle in Article 48 of Regulation No 1493/1999 modulates it in Article 52 and in the second and third subparagraphs of paragraph 2 of Section F in Annex VII. That modulation allows it, on the one hand, to recognise the primacy of the public interests underlying the approval of geographical designations identifying a wine as coming from a specified territory and, on the other hand, to respect the private interests of the holders of certain pre-existing trade marks containing words identical to the name of that territory. The point of equilibrium thus reached by Regulation No 1493/1999 seems reasonable to me.

75.Second, if the aim is to avoid misleading the persons to whom the trade marks and designations of origin are addressed, the argument of the likelihood of confusion may turn against the trade mark holder when, as is the case here, that holder identifies its wines with the toponym of the territory (‘Salaparuta’) in which the holder itself acknowledges that it does not grow them. (29)

76.Indeed, doubts might arise in the mind of the person to whom it is addressed as to the true origin of a wine identified, by its brand name, with the geographical term Salaparuta. Such a person could reasonably believe that the source of such a wine is the local administrative area of Salaparuta, when in fact it has ‘nothing to do’ with that locality. Conversely, there can be no doubt that the wines covered by the PDO ‘Salaparuta’ have been obtained from vines grown in that local administrative area. (30)

77.It should also be noted that Article 50(1) of Regulation No 1493/1999, with specific reference to Articles 23 and 24 of the TRIPS Agreement, states that the following are to be prohibited: ‘… the use in the Community of a geographical indication attached to the products referred to in Article 1(2)(b) for products not originating in the place indicated by the geographical indication in question …’ (emphasis added).

78.Lastly, for the benefit of the referring court (which is ultimately responsible for making a decision on the matter), I find it difficult to accept that, in 2016, the validity of a decision taken by the Italian authorities – and its consequent conversion into an EU PDO – which had been in force for 10 years without Duca di Salaparuta SpA having reacted to it at the time, is being called into question.

79.This circumstance has been alluded to, as I have already explained, by the Italian Government in its ‘preliminary objection’. (31) The Portuguese Government (32) and the Tribunale di Milano (District Court, Milan) have also done so, the latter stressing that ‘the Ministerial Decree recognising the Salaparuta DOC has never been challenged by the applicant [Duca di Salaparuta SpA] before the TAR [Regional Administrative Court]’, despite the fact that it had opposed such recognition in the administrative proceedings which led to it being granted. (33)

80.The national recognition of the Italian ‘Salaparuta’ DOC (which served as the basis for the Commission’s inclusion of ‘Salaparuta’ in the published list of quality wines psr and its conversion into a PDO) was granted by the Decree of 8 February 2006. That decree, let me repeat, was not challenged and therefore became final. Duca di Salaparuta SpA acknowledges that the compatibility of the new name with the pre‑existing trade mark was raised at the time it was put forward, (34) although this did not lead to any challenge to the decision adopted.

81.Duca di Salaparuta SpA is seeking to split the recognition of the Italian DOC at national level and that of the PDO at EU level, arguing that in the proceedings before the Italian courts it is not the former but the latter that is being challenged. (35) A reading of the order for reference and of the judgments delivered at first instance and on appeal shows, however, that its action was directed against both recognition procedures.

82.In defending before the Corte suprema di cassazione (Supreme Court of Cassation) the jurisdiction of the ordinary national court, rather than the EU court, Duca di Salaparuta SpA had claimed that, rather than a decision (of the Commission) granting the PDO, what existed was a ‘substantially automatic recognition’ of the designation registered at national level. (36) That court ruled in similar terms, declaring that the Italian DOC recognised at national level was automatically considered protected once the Member State had sent the Commission the national approval decision concerning the pre-existing designation. (37)

83.To allow the challenge, 10 years after the recognition granted by the Decree of 8 February 2006 to the Italian ‘Salaparuta’ DOC became final, to that recognition and the consequent successive and automatic conversion of the DOC into a PDO, could be incompatible with the requirements of legal certainty, which would be damaging to the wine producers of the ‘Salaparuta’ designation, who took advantage of the recognition of the national DOC and its extension as a PDO of the European Union.

84.In addition to the above, no one is alleging that the name ‘Salaparuta’ was cancelled a posteriori. The second subparagraph of Article 118s(4) of Regulation No 1234/2007 empowered the Commission, until 31 December 2014, on its own initiative, to cancel the protection of existing protected wine names, as referred to in paragraph 1, if they did not meet the conditions laid down in Article 118b. There is no record that such cancellation has taken place, nor is there any record that Duca di Salaparuta SpA has approached the Commission requesting it to do so.

85.In conclusion, I consider that the dispute referred to in the second question referred for a preliminary ruling must be resolved in accordance with paragraph 2 of Part F in Annex VII to Regulation No 1493/1999.

V.Conclusion

86.In the light of the foregoing considerations, I propose to respond to the Corte suprema di cassazione (Supreme Court of Cassation, Italy) as follows:

‘Articles 48, 52 and 54 of Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine, and the second and third subparagraphs of paragraph 2 of Section F in Annex VII to that regulation,

must be interpreted as meaning that:

–They apply to the designations of origin of wines which the authorities of a Member State have approved and forwarded to the European Commission for publication in the list of quality wines produced in specified regions under Article 54(4) of Regulation No 1493/1999;

–Wine names that are protected under Article 54 of Regulation No 1493/1999 automatically retain that protection under 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);

–The holder of a well-known registered trade mark for wine containing words identical to the name of a specified region, or of a geographical unit smaller than a specified region, may continue to use that trade mark only if it complies with the conditions in the second subparagraph of paragraph 2 of Section F in Annex VII to Regulation No 1493/1999. The holder may not object to the use of the names of geographical units used in the designation of quality wines produced in specified regions’.

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Original language: Spanish.

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Council Regulation of 17 May 1999 on the common organisation of the market in wine (OJ 1999 L 179, p. 1).

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Council Regulation 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). This regulation has been amended by Council Regulation (EC) No 491/2009 of 25 May 2009 amending Regulation (EC) No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) (OJ 2009 L 154, p. 1).

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Council Regulation of 29 April 2008 on the common organisation of the market in wine, amending Regulations (EC) No 1493/1999, (EC) No 1782/2003, (EC) No 1290/2005, (EC) No 3/2008 and repealing Regulations (EEC) No 2392/86 and (EC) No 1493/1999 (OJ 2008 L 148, p. 1).

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Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883, last revised in Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaties Series, Vol. 828, No 11851, p. 305; ‘the Paris Convention’).

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United Nations Treaties Series, Vol. 828, No 11848, p. 163 (‘the Madrid Agreement’).

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This agreement, ‘the TRIPS Agreement’, constitutes Annex 1C to the Agreement establishing the World Trade Organization (WTO), signed at Marrakesh on 15 April 1994 and approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1).

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This Article should be read in conjunction with Article 18 of Commission Regulation (EC) No 607/2009 of 14 July 2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products (OJ 2009 L 193, p. 60), which entered into force on 1 August 2009, the legal basis for the establishment of the ‘E-Bacchus’ register (see recital 8 of Commission Implementing Regulation (EU) No 314/2012 of 12 April 2012 amending Commission Regulations (EC) No 555/2008 and (EC) No 436/2009 as regards the documents accompanying consignments of wine products and wine sector registers to be kept (OJ 2012 L 103, p. 21)).

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In substance, the regulatory text laid down in Regulation No 1234/2007 was incorporated into 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), which is not relevant ratione temporis to the resolution of this dispute.

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According to Duca di Salaparuta SpA, the national trade mark was valid until 2009, and the European trade mark will be valid – for the time being – until 7 September 2029 (point 4 of its written observations).

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Decreto – Riconoscimento della denominazione di origine controllata dei vini ‘Salaparuta’ e approvazione del relativo disciplinare di produzione (Recognition of the controlled designation of origin of ‘Salaparuta’ wines and approval of the corresponding specifications) of 8 February 2006 (GURI No 42 of 20 February 2006, p. 34; ‘the Decree of 8 February 2006’).

OJ 2009 C 187, p. 1.

The PDO Salaparuta PDO-IT-A0795 was registered in the ‘E-Bacchus’ electronic database and is listed as such in the ‘eAmbrosia’ electronic database, with a registration date of 8 August 2009 (https://ec.europa.eu/agriculture/eambrosia/geographical-indications-register/).

Points 27 and 28 of the written observations of the Italian Government.

Judgments of 16 July 2015, Diageo Brands (C‑681/13, EU:C:2015:471, paragraph 59), and of 12 February 2008, Kempter (C‑2/06, EU:C:2008:78, paragraph 42).

As stated in the final subparagraph of point 18, the first and second subparagraphs of the third indent of point 20, and point 22 of its written observations.

Articles 55 and 57 of Regulation No 1493/1999 identify, respectively, the necessary and complementary factors on which the (national) provisions concerning the production of quality wines psr are to be based.

The same will apply if a Member State has assigned the name of a local administrative area or part of a local administrative area.

‘Provided that the brand name was registered at least 25 years before the official recognition of the geographical name in question by the producer Member State in accordance with the relevant Community provisions as regards quality wines psr and that the brand name has actually been used without interruption’.

See OJ 2009 C 187, p. 1.

The referring court cites, in this regard, as an example of compliance with the principle of legal certainty, the judgment of 22 December 2010 in Case C‑120/08, Bavaria (EU:C:2010:798), which also concerned a conflict between a geographical designation and an earlier trade mark. In paragraph 40 of its judgment, the Court ruled as follows: ‘the principle of legal certainty precludes a European Union measure from taking effect from a point in time before its publication, but it may exceptionally be otherwise where the purpose to be achieved so demands and where the legitimate expectations of those concerned are duly respected. In that regard, in order to ensure observance of the principles of legal certainty and the protection of legitimate expectations, the substantive rules of European Union law must be interpreted as applying to situations existing before their entry into force only in so far as it clearly follows from their terms, objectives or general scheme that such effect must be given to them’.

A similar wording was used in Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 1992 L 208, p. 1), Article 14(3) of which provided that ‘a designation of origin or geographical indication shall not be registered where, in the light of a trade mark’s reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product’. However, according to the second subparagraph of Article 1(1), ‘this Regulation shall not apply to wine products or to spirit drinks’.

Article 51(1) of Regulation No 479/2008 (which corresponds, in substance, to Article 118s of Regulation No 1234/2007): ‘Wine names, which are protected in accordance with Articles 51 and 54 of Regulation (EC) No 1493/1999 … shall automatically be protected under this Regulation. The Commission shall list them in the register provided for in Article 46 of this Regulation’.

Judgment of 13 February 2014, Hungary v Commission (C‑31/13 P, EU:C:2014:70, paragraph 58): ‘… the transitional system under Article 118s of Regulation No 1234/2007 was put in place in order to maintain, for reasons of legal certainty, the protection of wine names already protected before 1 August 2009 under national law, and therefore at EU level by virtue of Regulation No 1493/1999. The wording of Article 118s(1) of Regulation No 1234/2007 confirms that objective by providing that those wine names will “automatically be protected under this Regulation” …’.

In particular Article 14 of Regulation No 2081/92, Articles 43 and 44 of Regulation No 479/2008 and Article 2 of Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs (OJ 2000 L 109, p. 29). That latter directive was repealed, as from 13 December 2014, by Article 53 of the Regulation (EU) No 1169/2011 of the European Parliament and of the Council of 25 October 2011 on the provision of food information to consumers, amending Regulations (EC) No 1924/2006 and (EC) No 1925/2006 of the European Parliament and of the Council, and repealing Commission Directive 87/250/EEC, Council Directive 90/496/EEC, Commission Directive 1999/10/EC, Directive 2000/13/EC of the European Parliament and of the Council, Commission Directives 2002/67/EC and 2008/5/EC and Commission Regulation (EC) No 608/2004 (OJ 2011 L 304, p. 18).

Point 13 of the order for reference. References are made to Article 22 of the TRIPS Agreement, Article 10bis of the Paris Convention and Article 3bis of the Madrid Agreement. See those provisions as set out in points 6, 7 and 8 of the present Opinion.

Point 29 of its written observations. Duca di Salaparuta SpA has relied on that provision in the proceedings at first instance and on appeal and in the proceedings before the referring court. This fact is echoed by the Portuguese Government’s written observations (points 28 and 30). The Italian Government also considers this and refutes, by definition, the possibility that there could be deception in this case, within the meaning of that article (point 46 of its written observations).

An examination of the cited provisions of the Paris Convention, the Madrid Agreement and the TRIPS Agreement reveals their similarity, in essence and mutatis mutandis, with the prohibition on being deceptive or likely to cause confusion enshrined in Article 48 of Regulation No 1493/1999.

In point 8 of its written observations, Duca di Salaparuta SpA states that the ‘Salaparuta’ trade mark ‘has nothing to do with the local administrative area of Salaparuta in the province of Trapani, as the grapes used have never come from this territory and the company has its seat in another part of Sicily’.

In that regard, according to the Italian Government, the problem that, paradoxically, could arise is that of the validity of a trade mark (even a pre-existing one) which contains a geographical designation, as is the case here. It points out, however, that that problem did not arise in the original proceedings, which confirms that the position of the applicant (Duca di Salaparuta SpA) is indefensible (point 46 of its written observations). The Portuguese Government, for its part, warns of the risk of a trade mark unduly ‘monopolising’ the use of geographical names (point 35 of its written observations).

Point 40 of the present Opinion.

Points 43 and 44 of its written observations.

Page 25 of Judgment No 1384/2021 of the Tribunale di Milano (District Court, Milan).

In its written observations (point 6), Duca di Salaparuta SpA states that this issue was discussed in the national procedure for the recognition of the Italian ‘Salaparuta’ DOC. It adds that, as a result of its criticism, there was dissent in the national scientific committee, in relation to the likelihood of confusion with the trade mark of the same name.

Points 20 and 35 of its written observations.

Order No 21191 of the Corte suprema di cassazione, Sezioni Unite Civili (Combined Civil Chambers, Supreme Court of Cassation) of 13 September 2017, paragraph 2.

Ibid., paragraph 8.1.