Conflict between an earlier trademark and a P.D.O. (Protected Designation of Origin): it is for the National Court to assess it
By decision n. 21191 of 13 September 2017, the joint
sections of the divisions of the Supreme Court has recognized the competence of
the National Ordinary Court for the action taken by Azienda Agricola Salaparuta
s.p.a. based on its registered trademark “Salaparuta” for the nullity of the
homonymous P.D.O. conferred to a group of Sicilian wine producers with decree
by the Ministry of Agriculture and Forestry and measures by the EU Commission.
The Supreme Court
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 is challenged
the administrative regularity of the measures for the grant, it has confirmed
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. that corresponds to an earlier trademark”.
The Supreme Court has moreover pointed out that there
is a presumption of validity of the P.D.O. (granted by the domestic and EU
registration), but it is not binding in Courts. Furthermore it has confirmed
that the owner of an earlier domestic trademark can take action either before
the national Court or before the EU Court of Justice.
The matter has therefore been referred again to
the Milan Court where the proceedings was originally lodged.