CJEU confirms no retroactive protections forwell-known trade marks against GIs for wines in Case C‑341/24

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Jocelyn Bosse

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Oct 10, 2025, 7:48:36 AM (6 days ago) Oct 10

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CJEU confirms no retroactive protections for well-known trade marks against GIs for wines in Case C‑341/24

Jocelyn Bosse Monday, September 29, 2025 - geographical indications, Italy, Jocelyn Bosse, trade marks, wine

Earlier this month, the CJEU delivered its judgment in Case C‑341/24, confirming that the protections for well-known trade marks do not apply retroactively to geographical indications for wines that were registered under earlier EU regulations. The matter was referred by the Corte Suprema di Cassazione (the Italian Supreme Court) and concerned a conflict between the Salaparuta PDO for wines and earlier trade marks containing the word "Salaparuta".

Photo by Bade Saba via Pexels

Background

The case was brought by the Sicilian winery, Duca di Salaparuta, which owns trade marks containing the word "Salaparuta" that were registered in Italy in 1989 and as EU trade marks in 2000. The wine brand has been around since the nineteenth century and its trade marks are well-known.

The dispute concerns 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 denomination can be used for both white wine and red wine. The window to request the cancellation of the PDO expired on 31 December 2014, but Duca di Salaparuta did not seek cancellation before that deadline.

Case History

In 2016, Duca di Salaparuta initiated an action against several other wineries, as well as the representative body (the Consorzio di tutela dei vini DOC Salaparuta) and the Ministry of Agricultural, Food and Forestry Policies (which granted the national registration). The other wineries had been using the word "Salaparuta" on their labels. Given the placement, nature and size of the characters that featured the word "Salaparuta" more prominently than the name of the producing winery, Duca di Salaparuta argued that the labels infringed their trade marks and were misleading and deceptive.

The issue arose because the Salaparuta PDO received national protection in Italy while Regulation (EC) 1493/1999 applied. However, several changes occurred before the PDO was registered at the EU level on 8 August 2009. Regulation 479/2008 and the amendments introduced by Regulation 491/2009 entered into force seven days after they were published in the Official Journal, but in both cases, the relevant provisions for this dispute were only applicable from 1 August 2009 - just a few days before the EU registration of the Salaparuta PDO.

If these newer regulations applied to this case, then Duca di Salaparuta would argue that the PDO is invalid on the basis of the provisions like Article 43.2 of Regulation 479/2008 (which had no equivalent provision in the earlier Regulation 1493/1999):

“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.”

The Italian Supreme Court referred two questions to the CJEU in May 2024 (see IPKat here):

Whether the newer regulations would apply, or whether the above rule was inapplicable to names that already enjoyed national protection prior to unitary European registration being granted, in light of the principle of legal certainty (Case C 120/08, Bavaria).
Alternatively, whether the provisions in Section F of Annex VII to Regulation 1493/1999 exhaust all possible circumstances of coexistence between trade marks and PDOs, or whether the general principle of non-deceptiveness of distinctive signs could be the basis for a situation where a geographical indication might be invalid because it is liable to mislead the public as to the true identity of the wine because of the reputation of an earlier trade mark.

Advocate General Campos Sánchez-Bordona delivered his opinion (see IPKat here) in April 2025, which took the view that the more recent provisions that protect trade marks with a reputation did not apply retroactively to geographical indications that were registered under the earlier EU regulations. Regarding the second question, the Advocate General said that "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."

The CJEU judgment

The Court first dismissed a request to reopen the oral part of the procedure, by which Duca di Salaparuta was in fact criticising the merits of certain sections of the Advocate General’s opinion, which did not disclose any new fact capable of having a decisive influence on the decision. The Court also confirmed that the request for a preliminary ruling was admissible.

Question 1 - Applicability of the subsequent regulations

The CJEU focused on the automatic nature of protection for the Salaparuta PDO. It must be regarded as an extension of the wine name protected at national level, not the result of a new registration.

The transitional regime was designed "to exempt designations of origin and geographical indications which already existed in the European Union from the application of the new examination procedure, and to limit the possibilities of cancellation of those designations and indications, for reasons of legal certainty" (as discussed in Case C‑31/13 P, Hungary v Commission)

Since that transitional regime provides for the automatic extension of the protection of wine names protected under Article 54 of the earlier Regulation No 1493/1999 and, moreover, expressly governs the situations in which those names are withdrawn, the Court held that the subsequent regulations do not apply to conflicts like the one in these proceedings.

Section F(2) of Annex VII to Regulation 1493/1999 established the pre-eminence of a protected wine name over earlier well-known marks containing words identical to that name, by authorising, subject to compliance with the conditions laid down in that provision, the continued use of such marks. Therefore, the EU legislature necessarily considered, when Regulation 1493/1999 was adopted, that such a name could be registered despite the existence of an earlier well-known mark

Question 2 - Other principles for coexistence?

The CJEU slightly rephrased the second question to ask: whether the protection regime laid down by that regulation is complete, in that it covers all cases of coexistence between various signs, including protected wine names in particular, or whether the conflict between a well-known wine trade mark and a protected name that was granted subsequently, and includes a word identical to that mark, can be resolved on the basis of the general principle that distinctive signs must not be misleading.

Duca di Salaparuta pointed out that the earlier regulations in the agri-food sector contained provisions that earlier well-known trade marks represented an impediment to registration of a PDO/PGI (e.g. Article 14.3 of Regulation (EEC) 2081/92), and although such a provision was not explicitly included in the earlier wine regulation, it should be interpreted "systematically" in relation to the other unitary regulations to exclude the protection of deceptive signs. However, the CJEU agreed with the Advocate General: the EU legislature chose deliberately not to include an analogous provision in the wine regulation, and instead intended that such a name prevail over those trade marks, while providing for a regime under which they may coexist.

The Court also addressed the argument that the earlier wine regulation needed to be read alongside the provisions of the TRIPS Agreement, Paris Convention, and the Madrid Agreement, prohibiting any act capable of creating confusion with the products of a competitor as well as indications capable of deceiving the public as to the source of the goods. The Court confirmed that these treaties must be regarded as not having direct effect, since it is not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (see Case C‑382/21 P, EUIPO v The KaiKai Company Jaeger Wichmann, [63]).

Conclusion

The decision aligns with conclusions of the Advocate General and the earlier rulings of the District Court of Milan and the Milan Court of Appeal. While it may be appealing to argue that the protections should be interpreted in a uniform and systematic fashion across all sectors, the decision confirms that such principles cannot override when the text of the legislation clearly provides to the contrary.

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