Opinion of the Advocate General — ECLI:EU:C:2025:247
Date: 2025-04-03
Language of the case: Italian
Procedure: Reference for a preliminary ruling
Origin: Italy

Summary C-341/24 – 1 
Case C-341/24 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
8 May 2024 
Referring court: 
Corte suprema di cassazione (Italy) 
Date of the decision to refer: 
8 May 2024 
Appellant: 
Duca di Salaparuta SpA 
Respondents: 
Ministero dell’Agricoltura, della Sovranità Alimentare e delle 
Foreste 
Consorzio volontario di tutela dei vini DOC Salaparuta 
Baglio Gibellina Srl 
Cantina Giacco Soc.coop. agricola 
Madonna del Piraino Soc. coop. agricola 
  
Subject matter of the main proceedings 
The main proceedings concern an application for a declaration of invalidity of the 
registration of a PDO [(protected designation of origin)] in the wine sector and of 
the recognition of the relevant Italian DOC [(Denominazione di origine controllata 
(controlled designation of origin))] at national level. In support of the application, 
it is contended that such designations are deceptive and/or applied for in bad faith 
and, in any case, interfere with the trade marks of others.  
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C341/24 
 
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Subject matter and legal basis of the request  
The request for a preliminary ruling concerns the interpretation of Regulations 
(EC) Nos 1493/1999 and 1234/2007 and Regulation (EU) No 1308/2013 and 
seeks to determine the regime applicable for verifying the validity of the 
registration, effected in 2009, of a PDO for wines where the name was already 
recognised before the entry into force of Regulation (EC) No 1234/2007. That 
name interferes with an earlier trade mark with a reputation and is, therefore, 
liable to mislead consumers as to the identity of the wine. 
By its first question, the referring court asks whether, in such a case, the 
provisions of paragraph 2(b) of Section F of Annex VII to Regulation (EC) 
No 1493/1999 should apply and, consequently, whether such a registration is 
permitted, or whether the provisions of Article 118(k) of Regulation (EC) 
No 1234/2007, Article 43(2) of Regulation (EC) No 479/2008 and Article 101(2) 
of Regulation (EU) No 1308/2013 should apply, and consequently such a 
registration is not permitted. 
The second question concerns only the possible situation where the Court of 
Justice holds that the provisions of Section F of [Annex VII to] Regulation (EC) 
No 1493/1999 apply for verifying the validity of the registration of the PDO in 
question. The referring court asks whether, in that case, there are rules other than 
those latter provisions that result in the invalidity of a PDO or exclude its 
protection where that PDO interferes with an earlier trade mark with a reputation 
and is therefore liable to mislead consumers as to the identity of the wine. 
Questions referred for a preliminary ruling 
‘1. … Are PDO/PGI registrations, in the wine sector, of designations that 
existed prior to Regulation (EC) No 1234/2007 – subsequently replaced by 
Regulation (EC) No 1308/2013 – such as, in particular, the PDO ‘Salaparuta’ 
PDO-IT-A0795 of 8 August 2009, subject – in terms of the impediment to 
registration based on an earlier trade mark that, because of its reputation and 
renown, is liable to render the PDO/PGI in question misleading (‘protection is 
liable to mislead the consumer as to the true identity of the wine’) – to Article 43 
[paragraph 2] of Regulation (EC) No 479/2008, recte [Article] 118k of Regulation 
(EC) No 1234/2007 (then Article 101, [paragraph 2,] of Regulation (EU) No 
[1308]/2013), which excludes protection of the PDO or PGI where the name in 
question is liable to mislead the consumer, ‘in the light of a trade mark’s 
reputation and renown’, or is that rule inapplicable to names already enjoying 
national protection prior to unitary European registration being granted, in 
application of the principle of legal certainty (Court of Justice, judgment of 
22 December 2010, Case C-120/2008, [Bayerischer Brauerbund]), according to 
which a factual situation must, as a general rule, unless otherwise expressly 
provided, be assessed in the light of the legal rules in force at the time when the 
situation obtained, with the consequent application of the earlier regulatory 
DUCA DI SALAPARUTA 
 
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situation as laid down in Regulation (EC) No 1493/1999, and with the conflict 
between the designation of origin and the earlier trade mark to be resolved on the 
basis of the provisions of that legislation, laid down in Section F [paragraph] 2(b) 
of Annex VII to that regulation? 
2. If the answer to the first question affirms the necessary application of 
Regulation (EC) No 1493/1999 to the factual situation at issue in the present 
case, … do the rules laid down in Section F [of Annex VII] to Regulation (EC) 
No 1493/1999, which are intended to regulate the conflict between a trade mark 
registered for a wine or a grape must that is identical to protected designations of 
origin or geographical indications for a wine, exhaust all possible circumstances 
of coexistence between the different signs and all possible mechanisms providing 
protection for the wine names, or does there still exist a possible situation where 
later PDOs or PGIs might be invalid or not subject to protection, in cases where 
the geographical indication is liable to mislead the public as to the true identity of 
the wine because of the reputation of an earlier trade mark, by virtue of the 
general principle of non-deceptiveness of distinctive signs?’ 
Provisions of European Union law relied on  
Charter of Fundamental Rights of the European Union, and in particular 
Article 17; Regulation (EEC) No 2081/92, and in particular Articles 14 and 17; 
Regulation (EC) No 1493/1999, and in particular Articles 48, 52, 54 and 
Annex VII; Directive 2000/13/EC, and in particular Article 2; Regulation (EC) 
No 753 /2002, and in particular Article 28; Regulation (EC) No 510/2006, and in 
particular Articles 3 and 14; Regulation (EC) No 1234/2007, and in particular 
Articles 118b, 118i, 118k, 118l, 118s and 118u; Regulation (EC) No 479/2008, 
and in particular Articles 43, 44, 51 and 54; Regulation (EU) No 1151/2012; and 
Regulation (EU) No 1308/2013, and in particular Articles 101 and 107. 
Provisions of national law relied on 
The referring court refers to various Italian legislative texts on the subject, but 
without listing them in full, namely: legge 10 febbraio 1992, n.164 – Nuova 
disciplina delle denominazioni d’origine dei vini (Law No 164 of 10 February 
1992 – New rules on designations of origin for wines), and in particular Article 1; 
decreto del Presidente della Repubblica 20 aprile 1994, n. 348 – Regolamento 
recante disciplina del procedimento di riconoscimento di denominazione d’origine 
dei vini (Presidential Decree No 348 of 20 April 1994 – Regulations governing 
the procedure for the recognition of designations of origin for wines); decreto 
legislativo 10 febbraio 2005, n. 30 – Codice della proprietà industriale 
(Legislative Decree No 30 of 10 February 2005 – Industrial Property Code), 
pursuant to Article 15 of legge 12 dicembre 2002, n. 273 (Law No 273 of 
12 December 2002), and in particular Articles 14 and 29; decreto legislativo 23 
giugno 2003, n. 181 – Attuazione della direttiva 2000/13/CE concernente 
l’etichettatura e la presentazione dei prodotti alimentari, nonché la relativa 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C341/24 
 
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pubblicità (Legislative Decree No 181 of 23 June 2003 – Implementation of 
Directive 2000/13/EC [on the approximation of the laws of the Member States] 
relating to the labelling, presentation and advertising of foodstuffs), and in 
particular Article 2; decreto legislativo 8 aprile 2010, n. 61 – Tutela delle 
denominazioni di origine e delle indicazioni geografiche dei vini (Legislative 
Decree No 61 of 8 April 2010 – Protection of designations of origin and 
geographical indications of wines), implementing Article 15 of legge 7 luglio 
2009, n. 88 (Law No 88 of 7 July 2009); and decreto legislativo 12 dicembre 
2016, n. 238 – Disciplina organica della coltivazione della vite e della produzione 
e del commercio del vino (Legislative Decree No 238 of 12 December 2016 – 
Organic regulation of the cultivation of vines and the production and marketing of 
wine).  
Succinct presentation of the facts and procedure in the main proceedings 
1 It emerges from the request for a preliminary ruling that the appellant in the main 
proceedings is a wine-producing undertaking that is the owner of certain trade 
marks distinguishing the wines it produces. In 2016, it brought legal action, inter 
alia, against the respondents in the main proceedings before the Tribunale di 
Milano (District Court, Milan) requesting, specifically, that the registration of a 
PDO granted in 2009 and the recognition of an Italian DOC granted in 2006 be 
declared null and void: it argued that those designations are misleading and/or 
applied for in bad faith and, in any event, interfere with the appellant’s trade 
marks, which were registered in 1989 and enjoy a reputation. In fact, both these 
names and trade marks contain the expression ‘Salaparuta’. That court dismissed 
the appellant’s application, and the appellant then appealed that judgment before 
the Corte di appello di Milano (Court of Appeal, Milan). The appellate court 
confirmed the judgment at first instance. The appellant appealed the latter 
judgment before the Corte di cassazione (Supreme Court of Cassation), the 
referring court. 
The essential arguments of the parties in the main proceedings 
2 In its appeal before the Supreme Court of Cassation, the appellant argues five 
grounds of appeal, with the first three being relevant to the questions referred for a 
preliminary ruling. 
3 By its first ground, the appellant alleges an infringement of Article 118k(2) of 
Regulation (EC) No 1234/2007, the wording of which is reproduced in 
Article 43(2) of Regulation (EC) No 479/2008 and Article 107 of Regulation (EU) 
No 1308/2013. [It asserts that] the Court of Appeal, Milan, erred in holding that, 
for the purposes of verifying the validity of the PDO at issue, it is necessary to 
apply the transitional rule laid down in Article 51 of Regulation (EC) 
No 479/2008, which in essence reproduces the provisions of Article 118s of 
Regulation (EC) No 1234/2007 and establishes the automatic protection of 
DUCA DI SALAPARUTA 
 
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designations – such as the one in question – which were already protected under 
the previous legislation laid down in Regulation (EC) No 1493/1999. 
4 By contrast, the appellant submits that, for the purposes of verifying the validity 
of the PDO at issue, it is necessary to apply Article 118k(2) of Regulation (EC) 
No 1234/2007, which excludes the protection of a designation of origin where, in 
the light of a trade mark’s reputation and renown, consumers could be misled as to 
the true identity of the wine. 
5 According to the appellant, first, national recognition of the DOC containing the 
expression ‘Salaparuta’ was granted when Regulation (EC) No 1493/1999 was in 
force, and second, the registration of the PDO containing the expression 
‘Salaparuta’ was granted later, namely on 8 August 2009, when Regulations (EC) 
Nos 1234/2007 and 479/2008 were in force. Regulation (EC) No 1493/1999 
merely accepted national recognitions by requiring that they be notified to the 
Commission, without laying down conditions for the recognition or refusal of 
such recognitions. Regulation (EC) No 1234/2007, as amended by Regulation 
(EC) No 491/2009, repealed Regulation (EC) No 1493/1999, with effect from 
1 August 2009. From that date onwards, in the registration procedure for a PDO, 
registration is subject to a final decision by the Commission, while the Member 
States are entrusted simply with carrying out a preliminary evaluation procedure. 
6 The appellant submits that the transitional rules in Article 51 of Regulation (EC) 
No 479/2008 and Article 118s of Regulation (EC) No 1234/2007, which were 
incorporated into Article 107 of Regulation (EU) No 1308/2013, established that 
names protected by previous national recognition and protected under Regulation 
(EC) No 1493/1999 were to be registered under and for the purposes of the new 
legislation, unless such registration was refused administratively by the 
Commission by 31 December 2014. 
7 That being so, the appellant contends that the transitional rules referred to in the 
previous paragraph should be understood as meaning that, for names protected 
under Regulation (EC) No 1493/1999, national recognition of the Italian DOC 
was merely a prerequisite. This was necessary but not sufficient for registration of 
the PDO at EU level. The PDO, therefore, replaces the previous national 
recognition, and thus, in accordance with the abovementioned provisions of 
Regulations (EC) Nos 479/2008 and 1234/2007, the protection granted to pre-
existing wine names is given exclusively by the legislation in force at the time 
when the PDO for those wines was registered. 
8 It follows that – as the appellant asserts – new registrations of PDOs relating to 
names already recognised nationally under Regulation (EC) No 1493/1999, 
according to the transitional rule in Article 51 of Regulation (EC) No 479/2008 
and Article 118s of Regulation (EC) No 1234/2007, do not fall within the scope of 
Regulation (EC) No 1493/1999, but rather constitute new registrations under EU 
law. New registrations exist only from the date on which they are granted and are 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C341/24 
 
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protected under the EU law in force on that date, namely under Regulation (EC) 
No 1234/2007 and, currently, Regulation (EU) No 1308/2013. 
9 Under those circumstances, the appellant challenges the judgment under appeal in 
so far as that judgment holds that Article 43(2) of Regulation (EC) No 479/2008 is 
not applicable for verifying the validity of the registration of the PDO in question, 
on the ground that the national recognition of the Italian DOC containing the 
expression ‘Salaparuta’ was granted in 2006 and that that recognition had then 
benefited from the protection provided for in Article 51 of Regulation (EC) 
No 479/2008. 
10 According to the appellant, first, the national DOC recognitions that existed 
before 2009, including the recognition of the DOC containing the expression 
‘Salaparuta’, were repealed and ceased to apply as of 1 August 2009. Second, the 
registration of the PDO at issue did not merely presuppose the conclusion of the 
recognition procedure for that Italian DOC, but also entailed the performance of a 
separate administrative procedure. That administrative procedure for registration 
of the PDO, which falls exclusively within the scope of Union law, commenced 
with the registration of the PDO in question, on 8 August 2009, and ended on 
1 January 2015, as the Commission did not request the cancellation of that 
registration by 31 December 2014, in accordance with the provisions of Article 51 
of Regulation (EC) No 479/2008 and Article 118s of Regulation (EC) 
No 1234/2007.  
11 The appellant argues that the rules laid down in Article 118k of Regulation (EC) 
No 1234/2007 and Article 43(2) of Regulation (EC) No 479/2008, which exclude 
the protection of a name where it is liable to mislead the consumer ‘in the light of 
a trademark’s reputation and renown’, must also be applied to the examination of 
the validity of the registration of the PDO at issue, since those rules were in force 
both on the date on which the procedure resulting in the registration of the PDO in 
question was initiated (8 August 2009) and on the date on which it was concluded 
(1 January 2015). 
12 According to the appellant, Annex VII to Regulation (EC) No 1493/1999 did not 
contain a provision similar to Article 118k(2) of Regulation (EC) No 1234/2007, 
which expressly excludes the recognition of a designation of origin where the 
consumer might confuse that designation with a different trade mark with a 
reputation. Furthermore, Article 118l of Regulation (EC) No 1234/2007 provides 
for the possibility of coexistence of a designation of origin with a trade mark in 
cases other than that referred to in Article 118k(2). The appellant argues that the 
PDO in question is also subject to the provisions of the abovementioned 
Article 118k(2). 
13 By its second ground of appeal, the appellant submits, in the alternative (in the 
event that the rules laid down in Article 43(2) of Regulation (EC) No 479/2008 
and Article 118k(2) of Regulation (EC) No 1234/2007 are held not to be 
applicable to the present case), that even under the earlier legislation, namely 
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Regulation (EC) No 1493/1999, registration of wine names that could mislead the 
consumer because of the reputation of an earlier trade mark is not permitted. 
14 The appellant contests the judgment under appeal in so far as it holds that a name 
which, as in the present case, interferes with an earlier well-known trade mark, 
and is liable to mislead the public as to the true identity of the wine and is 
therefore deceptive, must necessarily be recognised as valid under Regulation 
(EC) No 1493/1999 since that regulation does not expressly establish that such a 
name is invalid. 
15 According to the appellant, in the light of a systematic interpretation of Regulation 
(EC) No 1493/1999 in relation to other rules of European Union law, on the one 
hand, protection of a misleading geographical designation must be excluded. On 
the other hand, there is no justification for the interpretation of the legislation 
adopted, in the judgment under appeal, according to which, as regards wines, 
misleading names are not invalid merely because they were recognised nationally 
before the introduction of the rules laid down in Regulations (EC) Nos 479/2008 
and 1234/2007. 
16 By its third ground of appeal, argued in the further alternative, the appellant 
considers whether Annex VII to Regulation (EC) No 1493/1999 should be 
interpreted as meaning that it also provides for the protection of PDOs that, given 
the reputation of an earlier trade mark, are liable to mislead consumers as to the 
true identity of the wine. In such a case, in accordance with Section F 2 of 
Annex VII to Regulation (EC) No 1493/1999, that earlier trade mark, where it is 
identical – as in the present case – to a PDO subsequently registered, could no 
longer even be used, with the result that, according to the appellant, that trade 
mark would be expropriated, in the absence of reasons of public interest and 
without compensation. 
17 On that point, the appellant alleges an unreasonable difference in treatment in 
relation to the identical situation concerning the relationship between an earlier 
mark with a significant reputation and a PDO subsequently registered under 
Regulation (EEC) No 2081/1992, which concerns designations of origin for 
agricultural products or foodstuffs other than wines. Article 14(3) of this latter 
regulation states as follows: ‘A designation of origin or geographical indication 
shall not be registered where, in the light of a trade mark’s reputation and renown 
and the length of time it has been used, registration is liable to mislead the 
consumer as to the true identity of the product’. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
18 It is clear from the order referring the questions for a preliminary ruling that the 
first question referred concerns the system of protections applicable in situations, 
such as the present case, relating to the period between 2006 and 2009, in which 
there was a pre-existing designation of origin, namely an Italian DOC, issued in 
the Member State in 2006, to which protection at EU level – namely a PDO – was 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C341/24 
 
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added or by which it was replaced. On that point, the referring court questions 
whether the first – national – recognition remains effective and receives protection 
under Regulation (EC) No 1439/1999 or whether that recognition should be 
regarded as having been replaced by the PDO, with the result that that name is 
governed by the legislation in force during the PDO registration procedure. 
19 With regard to the EU regulatory context, the order referring the questions notes 
that Regulation (EC) No 1493/1999 provided for an initial redefinition of the rules 
governing the wine market by introducing a classification of wines. Regulation 
(EC) No 479/2008 established a new classification in the wine sector, which 
provides for PDO and PGI ([protected geographical indications]) for wines 
characterised by a specific link with the territory of origin. 
20 According to the referring court, the application of PDOs and PGIs in the wine 
sector has, as a rule, led to the exclusion of national systems of protection, and the 
regulations relating to that sector have therefore introduced transitional rules to 
take account of the fact that, in the European Union, some national frameworks 
have already introduced rules governing designations of origin. Italy, taking 
advantage of an option permitted under Regulation (EU) No 1308/2013, chose to 
retain national designations, which can therefore continue to stand alongside the 
European ones. A controlled designation of origin ‘DOC’ therefore continues to 
have value at national level. 
21 The order referring the questions also states that the PDO registration procedure is 
made up of three steps. In the first step, wine producers submit applications for 
PDO registration to the Member State in which the wine production area is 
located. In the second step, after the Member State has carried out the necessary 
verification to ensure that the requirements have been met and after any objections 
have been resolved, that Member State forwards the application to the 
Commission. In the third step, the Commission carries out a further verification 
and takes the final decision on the registration of the PDO. 
22 The referring court then refers to the judgment of the Court of Justice in Case 
C-120/2008, [Bayerischer Brauerbund], concerning the interpretation of 
Regulation (EEC) No 2081/1992 on the protection of geographical indications and 
designations of origin for agricultural products and foodstuffs. It would appear 
from this judgment, first, that the principle of legal certainty precludes a European 
Union measure from taking effect from a point in time before its publication, but 
it may exceptionally be otherwise where the purpose to be achieved so demands 
and where the legitimate expectations of those concerned are duly respected. 
Second, the Court stated in that judgment that the principle of legal certainty itself 
requires that any factual situation should normally, in the absence of any contrary 
provision, be examined in the light of the legal rules existing at the time when the 
situation obtained. Furthermore, if the new law is valid only for the future, it 
would also apply, save for derogation, to the future effects of situations which 
came about during the period of validity of previous laws. 
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23 The referring court observes that, according to the judgment under appeal, 
Article 51 of Regulation (EC) No 479/2008 applies in the present case, and 
therefore designations of origin already protected under Article 54 of Regulation 
(EC) No 1493/1999 enjoy automatic protection through registration under 
Article 46 of Regulation (EC) No 479/2008, subject to the possibility for the 
Commission to order cancellation of protection before 31 December 2014. 
24 On the other hand, according to the appellant, the provisions of Article 51 of 
Regulation (EC) No 479/2008 and Article 118s of Regulation (EC) No 1234/2007 
apply only to the procedure for registration of the PDO at issue, whereas the 
provisions of Article 43(2) of Regulation (EC) No 479/2008 apply for verifying 
the validity of the registration of that PDO, because the PDO in question, 
registered on 8 August 2009, constitutes a new element that cannot fall within the 
scope of Regulation (EC) No 1493/1999, since this latter regulation was repealed 
with effect from 1 August 2009. 
25 The second question referred concerns the possible situation in which it is held 
that Regulation (EC) No 1493/1999 applies to the case referred to in the first 
question. The order referring the questions for a preliminary ruling notes that that 
regulation does not contain a specific provision that could resolve the conflict 
between, on the one hand, an earlier trade mark with a reputation and, on the other 
hand, a later designation of origin that interferes with that trade mark and is liable 
to mislead consumers. In that context, the referring court asks whether it is 
possible to derive a general principle, from the systematic interpretation of the 
legislation on trade mark protection, that protects trade marks, including 
designations of origin, against subsequent misleading signs, having regard to 
Article 14 of Regulation (EEC) No 2081/1992, even though that text is not 
applicable to the wine sector. 
26 As noted by the referring court, Regulation (EEC) No 2081/1992, unlike 
Regulation (EC) No 1493/1999, was intended to regulate the matter of 
designations of origin in a complete and exclusive manner. In particular, 
Article 14(3) of Regulation (EEC) No 2081/1992 contained the rule stating that a 
designation of origin may not be registered where, in the light of a trade mark’s 
reputation and renown and the length of time it has been used, registration is liable 
to mislead the consumer as to the true identity of the product. This rule was only 
introduced for wines with Regulation (EC) No 497/2008. 
27 On this point, the referring court observes that several provisions prohibit any 
distinctive or descriptive sign, trade mark or designation of origin, that is liable to 
mislead the public, such as, in particular, Article 10bis of the Paris Convention of 
20 March 1883 for the Protection of Industrial Property, Article 3bis of the 
Madrid Agreement for the Repression of False or Deceptive Indications of Source 
on Goods of 14 April 1891, subsequently revised in Washington, The Hague, 
London and Lisbon, and Article 2 of Directive 2000/13. 
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28 The referring court notes that, according to the respondents, in the conflict 
between trade marks and indications of quality, a rule other than the fundamental 
rule on distinctive signs is often applied, according to which earlier rights prevail 
over later rights. On this point, a legislative choice in favour of quality indications 
emerges from EU law, which would imply a prevalence of the latter over other 
distinctive signs. 
29 According to the referring court, the relationship between protected designations 
and trade marks in the wine sector has been regulated in a manner essentially 
coinciding with other agri-food products only by Regulation (EC) No 479/2008, 
which introduced a new system for Community-wide registration of PDOs and 
PGIs for wines, which entered into force on 1 August 2009, replacing the system 
established by Regulation (EC) No 1493/1999. This system was based on the 
national registration designations, which were then automatically recognised at 
Community level.