Conflict between an earlier trademark and a P.D.O. (Protected Designation of Origin): it is for the National Court to assess it
By decisionn. 21191 of 13 September 2017, the joint sections of the divisions of the SupremeCourt has recognized the competence of the National Ordinary Court for theaction taken by Azienda Agricola Salaparuta s.p.a. based on its registeredtrademark “Salaparuta” for the nullity of the homonymous P.D.O. conferred to agroup of Sicilian wine producers with decree by the Ministry of Agriculture andForestry and measures by the EU Commission.
The SupremeCourt has qualified a P.D.O. as an “industrial property right”, pursuant toart. 1 of the Italian IP Code. Consequently, except in the case in which it ischallenged the administrative regularity of the measures for the grant, it hasconfirmed the competence of the National Court to assess the claim for nullity of a P.D.O., consisting in a “claim having the same content as the one fornullity of a trademark which is denied exclusivity, it being directed tounderline the false, misleading and parasitic nature of a P.D.O. thatcorresponds to an earlier trademark”.
The SupremeCourt has moreover pointed out that there is a presumption of validity of theP.D.O. (granted by the domestic and EU registration), but it is not binding inCourts. Furthermore it has confirmed that the owner of an earlier domestictrademark can take action either before the national Court or before the EUCourt of Justice.
The matter has therefore been referred again to theMilan Court where the proceedings was originally lodged.