Is Balsamic Vinegar for all? Yes, says Italian Supreme Court

 

The Italian Supreme Court recently ruled in a case between the Consorzio Tutela Aceto Balsamico di Modena (Consortium for the Protection of Balsamic Vinegar of Modena, "the Consortium") and Acetaia del balsamico trentino di Bombardelli (Balsamic Vinegar Company of Trento, "the defendant") and Bennet S.p.A. for the use of the name "Aceto Balsamico" (Balsamic Vinegar). The proceedings concerned a product, which is similar to the protected geographical indication (GI) "Aceto Balsamico di Modena" (Balsamic Vinegar of Modena) but does not comply with its specifications.

Background

The Consortium sought an injunction against the defendant's use of the name "Balsamic Vinegar", claiming that it infringed its GI “Balsamic Vinegar of Modena”. The Court of Milan (first instance) dismissed the Consortium's claims. The Consortium appealed and the Court of Appeal of Milan (second instance) upheld the decision.

The Court of Appeal emphasised that GI protection extends to composite names and not to individual non-geographical terms. It also rejected the argument that terms such as "vinegar" or "balsamic vinegar" could evoke the Consortium's GI.

The Consortium appealed the decision before the Italian Supreme Court on two main grounds: a) alleged misapplication of EU Regulation No. 1151/2012 (recently replaced by EU Regulation No. 2024/1143 of 11 April 2024), arguing that evocation should not be limited to cases where the contested name directly refers to the protected geographical origin and disputed the Milan Court of Appeal's assessment of consumer perception, based on a survey submitted in the first instance proceeding to demonstrate the significant association between the contested product and the protected GI.

The decision

By decision no. 10352 of 17 April 2024, the Italian Supreme Court dismissed the appeal.

The Supreme Court confirmed that the prohibited "evocative" conduct must relate to a characteristic evoking the geographical origin of the protected product. However, GI protection does not extend to the exclusive use of individual non-geographical terms such as "vinegar", "balsamic" or "balsamic vinegar", as this would create a monopoly for the Consortium. The Italian Supreme Court emphasised that GI protection covers, in this case, the entirety of the name. In addition, the contested product lacks the evocative elements of the GI "Balsamic Vinegar of Modena" and therefore does not create, in any case, an association with the city of Modena.

The Italian Supreme Court then upheld the reasoning of the Court of Appeal of Milan, which was based not only on the indication of a different place of origin, as argued by the Consortium, but also on the examination of all the elements and characteristics, including the figurative ones, which did not establish any association with the GI of the protected product.

Finally, the Italian Supreme Court analysed the concept of the average European consumer. The concept of the "normally informed and reasonably careful and prudent" has become important in EU case-law (C-44/17). This concept emphasises the consumer's perception when faced with a disputed name, assessing whether it directly evokes the GI. Other criteria, such as partial incorporation or phonetic similarity, are secondary to this consumer perception.

                                                        an Italian cat pondering whether to use vinegar on his salad

Comment

The decision of the Italian Supreme Court is aligned with the previous decision of the CJEU (C-432/18; see the IPKat here) on the limits of protection of the same GI "Balsamic Vinegar of Modena". The first instance proceeding was suspended by the Court of Milan pending the outcome of the CJEU decision. The CJEU ruled that the protection granted to the GI "Balsamic Vinegar of Modena" does not extend to the individual non-geographical terms "vinegar" and "balsamic".

In recent years, the CJEU has been asked on several occasions to resolve questions concerning the scope of protection of protected GIs and Protected Designations of Origin (PDOs) under EU Regulation 1151/2012. According to this case-law, the Regulation does not affect the use of terms that are generic in the European Union, even if the generic term is part of a name protected as GI.

For these reasons, the definition of "generic terms" is crucial for limiting or not limiting protection. The CJEU has been particularly active in shaping the preceptive content of the rule and in identifying the modalities and factors to be considered when determining the generic nature of a term. The CJEU has clarified on several occasions that the assessment of the allegedly generic nature of the single terms of a composite name is exclusively a matter for the national courts (C-132/05; see The IPKat here; C-465/02). Many factors have been taken into account, such as: the places of production of the product in question, both inside and outside the EU Member State that has registered the name; the consumption of that product and the way its name is perceived by consumers inside and outside the EU Member State that has obtained the registration; the existence of specific national legislation concerning the product; as well as the way the name is used in European legislation (C-132/05, C-465/02 and C-159/20; see The IPKat here).

The CJEU has also considered the following additional factors to be relevant: the fact that a product has been lawfully marketed in one or more EU Member States; the existence of national legislation mentioning the name and giving it a generic meaning; the relationship between the volume of production and marketing of the products using the alleged generic name; and the volume of production and marketing of the products made according to traditional methods protected by the GI (T-291/03, C-289/96, C-465/02).

The assessment of the generic nature of a term forming part of a protected name is undoubtedly a complex exercise, partly because of the many factors to be considered, some of which change over time and space, such as the perception of consumers. This assessment should therefore be properly resolved on a case-by-case basis by a national court.

 

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