The importance of GIs: the defeat of trade marks clashing with GIs


Geographical indications ("GIs") are names or expressions indicating a geographical area, adopted for designating a product originating from such area, provided with peculiar characteristics deriving from said territory.  As GIs are also names and/or signs, their use should be coordinated with trade marks.  Generally speaking, the European and Italian legislation grants GIs a broad protection over trade marks containing or evoking them.  This approach can be seen in two recent Italian decisions.


The Società Agricola Sant'Angelo al Chiarone ("SASAC"), an Italian company active in the production of wine, filed before the Court of Rome, a preliminary declaratory action for non-infringement against the Italian Ministry of Agricultural Policies seeking a declaration that their Italian trade marks VERMENTINO DI MAREMMA (filed on 28 May 2008 and registered on 1 March 2011) and MORO DI CAPALBIO (filed on 21 December 2009 and registered on December 22, 2010) did not infringe the Protected Designations of Origin (PDOs) "Maremma Toscana" and "Capalbio".

SASAC's trade marks were filed in respect of "spirits" in class 33 and the relevant PDOs protect two varieties of wines typical of an area located between Tuscany and Lazio, called Maremma.  SASCO was located in Capalbio (Tuscany), which is located within Maremma.

SASAC's wines do not fulfil the necessary quality requirement provided by the relevant regulation and are not afforded the protection of the PDOs.  SASAC's wines had complied with the previous Protected Geographical Indication (PGI) "Maremma Toscana" (dated 9 October 1995) but this was repealed and subsequently registered as PDO on 30 September 2011.

SASAC claimed that no violation would occur since the (VERMENTINO DI MAREMMA) was registered before the PDO "Maremma Toscana", although later than the registration of the corresponding PGI.  With reference to the trade mark MORO DI CAPALBIO, SASAC argued that this would not infringe the PDO "Capalbio" as the Ministry would have implicitly consented to the legitimacy of said trade mark on the basis that the word part of the trade mark was purely fictional as it was typical for trade marks.

On April 28, 2014, the Court rejected the application, stating that Article 118 (l) of Regulation 1234/2007 (establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products) and Article 20.4 of the Italian Legislative Decree no.  61/2010 (both dealing with the refusal of a trade mark registration for products comparable to a PDO or PGI filed later than the registration date of the PDO or PGI) affirmed that "whoever produces wine in a geographical protected area has the faculty to have its product distinguished by a PDO or PGI, but s/he cannot use said PDO or PGI as trade marks".  According to the Court, GIs fulfil the purpose of indicating the origin, nature and quality of products, while trade marks have purely a distinctive function.  If it were possible to use the trade mark corresponding to the PDO or PGI, the trade mark would lack distinctiveness.  This is also confirmed by Article 13.1, b) of the Italian IP Code, forbidding the registration of trade marks constituted of descriptive or generic indications, including the geographical provenance of the product they distinguish.

Therefore, the Court stated that the overlap between the trade marks and GIs was excluded since "the corresponding trade mark would be deceitful and, at any rate, not valid since purely descriptive".

Based on that reasoning, the Court held that the trade mark VERMENTINO DI MAREMMA, was invalid as it lacked distinctive character.  It was also deceptive for the consumer because although the wine fulfilled the requirement of the revoked PGI, it did not comply with the later issued PDO.

With reference to the trade mark MORO DI CAPALBIO, the Court held that the trade mark was not valid, as it has been registered later than the relevant PDO.  SASAC's defence on the fictional nature of the expression MORO DI CAPALBIO was not accepted.  What mattered was that the trade mark contained the PDO and this was enough to mislead the consumer as to the qualities of the product distinguished by the trade mark

The "GORGO CAPRA" case

It is impossible to not known the Gorgonzola cheese.  The characteristic fragrance (you may like it or not but certainly, you do not forget it!), the blue veins of the cheese made from cow's milk and the creamy texture are some of the main features of the cheese very much loved by northern Italians (for those who do not know it, Gorgonzola is a town not far from Milan and included in the area of the corresponding PDO "Gorgonzola") and, of course, by many others.

The Consorzio per la tutela del formaggio Gongorzola (the "Consorzio", i.e., the Consortium for the protection of the Gorgonzola cheese), which is the body responsible for monitoring the use of the PDO, has an important role for protecting the PDO from possible illicit activities.

As part of this remit, the Consorzio recently filed before the Specialized Division on Enterprise Matter of the Court of Turin, a trade mark cancellation action against the Italian trade mark GORGO CAPRA registered for class 29, including cheeses.  In particular, the contested trade mark was used for distinguishing a peculiar type of cheese described as a "matured gorgonzola cheese made from goat's milk".

The owner of the challenged trade mark affirmed that the expression "GORGO" meant the vortex created by the milk during the preparation of the cheese, whereas "CAPRA" was indicated to clarify the type of milk used for the preparation, i.e., goat's milk.

On 9 May 2014, the Court upheld the Consorzio's claims.  The Court held that, as Gorgonzola cheese was granted protection as a PDO (under the Regulation of 12 June 1966), Regulation no. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (now repealed Regulation no. 1151/2012) applied.  Under Article 13, a PDO is protected against any usurpation, imitation or evocation, even if the real origin of the product is indicated.

To under the meaning of "evocation", the Court referred to the EJEU's decisions in the Parmesan (C-132/05) and Cambozola (C-87/97) cases and affirmed that GIs are broadly protected, regardless the risk of any confusion of the consumer.  Such protection includes all the situations where "a sign used for products comparable to that protected by the geographical indication but lacking of the relevant mandatory requirements, is liable to indicate or merely suggest the sign protected by the PDO".

Following this principle, the Court of Turin held that the trade mark GORGO CAPRA evoked Gorgonzola since it contains part of the PDO.  Moreover, the Court held that the evocative power of the challenged trade mark was quite strong since the first part (GORGO) catches the attention of the consumer and reminds to him/her the Gorgonzola cheese and the second part (CAPRA, i.e., 'goat') lead the consumer to think, mistakenly, that there exists a special kind of Gorgonzola cheese made from goat's milk.  As a consequence, the Court cancelled the trade mark "GORGO CAPRA", for milk and dairy products included in class 29.