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In this remarkable judgment, the Milan Court of Appeal (Judgment No. 131 of January 18, 2023) ruled out interference between the trademark “Acetaia del Balsamico” and the PGI “Aceto Balsamico di Modena” because the words “aceto” and “balsamic” are common and generic, not suggestive of the PGI.
The Consortium for the Protection of Balsamic Vinegar of Modena filed a lawsuit against Acetaia del Balsamico Trentino alleging infringement of the PGI mark “Aceto Balsamico di Modena” – registered under protected designations of origin and protected geographical indications through Regulation (EC) 583/2009 – as well as the perpetration of unfair competition practices.
The Court of Milan, after putting the proceedings on hold pending the decision of the Court of Justice on a similar dispute between the Consortium itself and a German company, rejected the plaintiffs’ claims, arguing that the sign “Acetaia del Balsamico” did not evoke the geographical name of the PGI trademark owned by the Consortium.
Therefore, the Consortium decided to appeal against the first instance ruling.
The regulation of PGI (Protected Geographical Indication) trademarks is regulated through European Union Regulation No. 1151/2012, which establishes the legal framework for this type of label.
The aforementioned regulation defines the PGI as a trademark that protects the name of a product that comes from a specific region, geographical area or, in some cases, a specific country. The primary purpose of the PGI is to protect and enhance traditional or characteristic products from a specific geographical area, while assuring consumers of the authenticity and quality of these products.
According to the regulation, to obtain the PGI, a product must be closely associated with a specific geographical region and possess a certain quality, reputation or other characteristic that is attributable to that region. In addition, the production, processing and/or preparation of the product must take place in the specified geographical area.
The process of obtaining the PGI mark requires the manufacturer to submit an application to the competent authorities of the member state of his nationality. The application must provide detailed information about the product, its geographical origin, production methods and characteristics that make it unique. After a thorough evaluation, if the product meets the established requirements, the PGI mark is granted.
In light of this, the name “Balsamic Vinegar of Modena” was included in the register of PGIs by EC Regulation 583/2009, which includes the following specification within it, “The individual non-geographical terms of the composite name, even when used in combination, as well as their translation, may be used in the territory of the Community in accordance with the principles and rules applicable in the Community legal system”.
Therefore, the protection conferred on the PGI is limited to the geographical name. In fact, Art. 13, para. 2, para. 2, provides that “Where a protected designation of origin or a protected geographical indication contains the name of a product considered generic, the use of that generic name shall not be considered contrary to subparagraph (a) or (b) of the first paragraph”.
The Consorzio Tutela Aceto Balsamico di Modena presented seven grounds of appeal, arguing that the overall effect on evocation of the use of the various elements had been wrongly assessed. In the appellant’s view, recent European Union case law establishes that evocation cannot be limited to the protected elements and that interpretation must be based on the mental association the consumer can make with the protected product, not necessarily with the name or geographical term.
In addition, the appellant presented the results of a survey showing that the majority of respondents directly associated the product containing the word “balsamic” with Aceto Balsamico di Modena IGP or its characteristics and production method.
In contrast, the respondent, Acetaia del Balsamico Trentino, invoked the application of Article 13, para. 1, para. 2 of EU Regulation 1151/2012, arguing that the term vinegar was a common term and that the term balsamic, as unprotected, was not evocative and could not even be considered a traditional non-geographical name, linked exclusively to the protected product and the territories of the PGI.
In addition, the respondent pointed out that clear reference is made on the product to the origin and provenance (Trentino) of the product, a circumstance that, in itself, is capable of avoiding any unlawful evocation of the registered PGI mark.
In its decision, the Court of Appeals of Milan upheld the trial court’s ruling. It was particularly critical to understand whether the terms “vinegar,” “balsamic,” and “balsamic vinegar” were such as to directly call to the consumer’s mind the geographical region of Modena.
Before addressing the issue, the Court of Appeals of Milan recalled that the jurisprudence cited by the appellant, as a matter of fact, only seemingly broadened the object of the evocation to the point of extending it to the protection of only a part of the PGI not containing any reference to the geographical place or form of the product. Admittedly, in the decisions cited by the Consortium, the Court of Justice of the European Union identified the cause of the unlawful conduct in the fact that that particular contested element referred to the PGI’s territory of origin.
Back to the answer to the question posed by the Court of Appeal, it should be noted that the term “vinegar” is an entirely common non-individualizing term, as is the term “balsamic,” which, since it can be associated with products of various kinds, is, again, a generic term.
It can therefore be inferred that the name used by Acetaia del Balsamico, containing among other things an explicit reference to the place of origin of the product (Trentino), does not determine any mental association in the mind of the consumer.
Similarly, the fact that the products are similar is irrelevant, since the color of the product is necessarily dark due to the raw material used and to the method of production, and the glass bottle used to market the product itself is a very common bottle for any type of vinegar. These terms, being common and generic, do not evoke the PGI and are not subject to the protection conferred on it.