Wine Law

8 2013/1308 expressly states that “ Protected designations of origin and protected geographical indications shall not become generic in the Union within the meaning of Article 101(1) ”. These differences highlight a different function: the protection of a strong public interest, connected to consumers’ rights and to the promotion of local production, in the case of geographical indications and designations of origin, and the combination of the private interest of the associations of producers with consumers’ rights, in case of collective trademarks. That said, the most delicate issue is the possible coexistence of geographical collective trademarks with geographical indications and designations of origin. Despite some different doctrinal opinions, according to the well-established Italian case-law, DOs and GIs may freely coexist with collective trademarks. Among the very rare rulings on this matter, it is worth recalling the decision of the Italian Supreme Court No. 10587, of 28 November 1996, which has stated that designations of origin and collective trademarks may coexist, in the presence of little differences, if the requirements for the existence of both titles are met. Considering the wine sector, a recent ruling of the Court of Florence, of 21 May 2015, has indirectly expressed the same principle. As a matter of fact, the Court has accepted the requests of the plaintiff, the Consortium of the wine “Vino Nobile di Montepulciano” - which comes from the “San Giovese” grape variety, different form the “Montepulciano d’Abruzzo” - grounded on the collective trademark “Vino Nobile”, as well as on the designation of origin “Vino Nobile Di Montepulciano DOCG”. In particular, the Court of Florence has stated that the “Nobile Prima” trademark and the relevant domain name, registered since 2001, infringed the collective trademark “Vino Nobile” of Montepulciano of Siena, thanks to its recognised notoriety. Moreover, the Court has also ascertained that the use of the “Nobile Prima” trademark constitutes an act of unfair competition, according to Article 2598 of the Italian Civil Code. This significant ruling allows to recall that the registration as collective trademarks, by collective bodies, of geographical names, protected as designations of origin or geographical indications, constitutes a common practice in the Italian wine sector.