Wine and International Disputes

The author analyses four cases regarding wine, which give the opportunity to examine the legislation regulating the matter. In 2005, upon adjudicating on a dispute concerning a type of wine called "Tocai", which was produced in the Italian region of Friuli, the Court of Justice confirmed the prohibition of using the aforesaid name after 31st March 2007, rejecting any claim based on the homonymy between the name "Tocai" (used for a type of dry white wine produced in Friuli) and the name "Tokaj" (used for a type of sweet wine produced in Hungary), on the account that such homonymy could not exist between names indicating different entities, i.e. a species of vine in the Italian case and the wine in the Hungarian case. The Wto Panel sitting on 15th March 2005 addressed the issue that had arisen in 2003 with regard to the relationship between a previous non-EU geographical trademark and a subsequent EU geographical mark. On that occasion, the Wto Panel asserted the lawfulness of the EU legislation with respect to the Trips Agreement, thus admitting the coexistence of EU geographical marks and previously registered geographical trademarks, to the extent that such coexistence was not misleading. The Agreement of 10th March 2006 between the Usa and the EU regarding the market of wine confirmed the Trips Agreement, which excluded the protection of signs (including geographical signs) that had become generic, and specified that the Usa considered the Chianti and Marsala indications to be generic. With a judgment dated 11th May 2010 the Court of First Instance rejected the application for registration as EU trademark of the name "Cuvèe Palomar", due to the presence of the "Valencia" controlled origin denomination, which included a town called "el Palomar" in the protection. The Court grounded its decision on the absolute protection recognised both by art. 23 of the Trips Agreement and by art. 7, paragraph 1, letter j), of Regulation 40/1994 and thus, on the prohibition of using also the geographical indication of the place where the wine that was meant to be marked with the name "Cuvèe Palomar", which was identical to the name of the protected geographical indication of the wine produced in the different region of Valencia, was actually produced.

Keywords: Wine, Geographical Names, Trademarks, Coexistence

Alberto Germanò, Vino e controversie internazionali in "AGRICOLTURA ISTITUZIONI MERCATI " 1/2011, pp 11-23, DOI: 10.3280/AIM2011-001002