GEOGRAPHICAL INDICATIONS | The ECJ on conflict between a wine PDO and earlier trademarks

On 11 September 2025, the European Court of Justice (the CJEU) handed down its decision in case C-341/24 (Duca di Salaparuta S.p.A. v Ministero dell’Agricoltura, della Sovranità alimentare e delle Foreste), clarifying the legal framework for conflicts between wine names protected as geographical indications (GIs) and earlier trademarks. The dispute – originated by a referral of the Italian Supreme Court – concerned the Sicilian Protected Designation of Origin (the PDO) ‘Salaparuta’ (registered in 2006) and earlier well-known trademarks consisting of the word ‘Salaparuta’ (registered respectively in 1989 and 2000) (the Earlier Trademarks). The Earlier Trademarks owners sought the cancellation of the PDO Salaparuta claiming as a basis  the general EU provisions preventing GIs registration of a sign due to a conflict with an earlier sign with reputation (e.g. Article 101(2) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013), while the aforesaid PDO was applied and registered under the previous transitional regime (Council Regulation (EC) No 1493/1999 of 17 May 1999), which automatically extended national wine names to EU-level protection and explicitly allowed coexistence with prior well-known sings under specific conditions. The CJEU ruled that the Regulation No. 1308/2013 does not apply retroactively to PDOs (and, on a general level, to GIs) that qualified for registration under older EU regulations. Instead, such conflicts must be resolved solely under the transitional regime of the prior wine regulation that was applicable at the time of the GI application. Therefore, by applying the rules of the transitional regime of Regulation No. 1493/1999 instead of those of the newer Regulation No. 1308/2013, the ECJ found that the Salaparuta PDO remains protected despite the Earlier Trademarks.

Newsletter n. 111 – October 2025