GEOGRAPHICAL INDICATIONS | The Advocate General on the co-existence between geographical indications and well-known trademark

On 3 April 2025, the Advocate General issued its opinion in case C-341/24, concerning the coexistence of an earlier well-known trade mark and a later geographical indication (GI) for wines. The case originated from a request by the owner of the well-known trade mark “DUCA DI SALAPARUTA” (registered in Italy in 1989 and at the EU level in 2000), seeking to declare invalid a GI registered under the same name in 2007. The Advocate General held that the applicable law in this case is the former Council Regulation (EC) No 1493/1999 of 17 May 1999, which allows for the coexistence of a prior well-known trade mark identical to a later GI. Conversely, the Advocate General found that the later Council Regulation (EC) No 1234/2007 of 22 October 2007 and Council Regulation (EC) No 479/2008 of 29 April 2008 were not applicable. These later rules stipulated that a GI for wine could not be registered if it was identical or similar to a well-known trade mark and, due to the reputation of that trade mark, its protection was likely to mislead consumers as to the true identity of the wine. This case is of the utmost importance as it highlights the complex issue of co-existence between GIs and trade marks. Co-existence represents of a relevant deviation from the well-established principle of priority – a cornerstone of intellectual property rights. The issue has historically caused, and continues to cause, transatlantic tensions between the EU and New World countries, which advocate for greater flexibility in using geographical names from Old World, such as Champagne or Prosecco. These tensions peaked in the early 2000s, when two disputes were brought by US and Australia before a WTO panel, unsuccessfully alleging that the European Communities had breached TRIPS provisions.

Newsletter n. 106 – April 2025