Italian Court upholds the protection of “Vino Nobile di Montepulciano DOCG” as a designation of origin and its related trademarks

The Consorzio del Vino Nobile di Montepulciano ("Consorzio") filed a claim against two Tuscan companies, Azienda Agricola Nobile Prima and Nobile Prima Srl, of the Chianti area, for the unauthorised use of the words “Nobile Prima” in their company name, domain name and wine labels claiming that such use infringed the Consorzio's Italian, Community and International trademarks NOBILE, VINO NOBILE, VINO NOBILE DI MONTEPULCIANO as well as the designation of origin “Vino Nobile di Montepulciano DOCG”. Although the use of “Nobile Prima” occurred outside the protected area of Montepulciano in Siena, the Consorzio also claimed that said use amounted to unfair competition for slavish imitation and misappropriation of qualities.

The Defendants responded with counterclaims of revocation and invalidity of the Consorzio’s trademarks. They claimed the marks had become misleading as to the provenance and quality of the product and they should be declared invalid on the grounds of lack of novelty and registration in bad faith (under art.26b of the Italian IP Code and art.51 of the CTM Regulation).

Counterclaim for revocation and invalidity

Regarding the revocation counterclaim, according to the Defendants, the protection granted to a different designation of origin, “Montepulciano d’Abruzzo DOC”, where “Montepulciano” referred to the variety of the grape as per EU Regulation no. 401/2010¹  and not the region of provenance, meant that the term “Vino Nobile di Montepulciano”, where the opposite is true, should be “declassified” and no longer protected as a designation of origin.

The Court disagreed with this argument saying that “Vino Nobile di Montepulciano” was still protected as a designation of origin, since, unlike "Montepulciano d’Abruzzo DOC", the wine in question is made from the Sangiovese variety of grape and "Montepulciano" does refer to the area of provenance (i.e. the picturesque town of Montepulciano close to Siena). In fact, the “Vino Nobile di Montepulciano DOCG” has been recognised as a protected designation of origin ("PDO") since 1966 and this has been recently confirmed by the Italian Ministerial Decree of 16 January 2015 where they renewed and reaffirmed the appointment of the Consorzio as the body in charge of the protection of said designation of origin.

As a secondary argument, the Defendants claimed the Consorzio’s trademarks were invalid in light of the alleged prior use of the sign NOBILE PRIMA by them since 2001. However, the Consorzio provided evidence which showed a long standing prior use of the signs VINO NOBILE and VINO NOBILE DI MONTEPULCIANO, and also claimed that the corresponding designation of origin was protected well before the date of alleged prior use by the Defendants. The Court , therefore, dismissed the Defendant's claim.

Similarly, taking into account the above reasoning, the Court rejected the counterclaim regarding registration of a mark in bad faith.

Claim for infringement

Regarding the Consorzio's infringement claims, the Court considered that the core or distinctive element of the Consorzio’s trademarks was the word "Nobile" ("noble" in Italian), which is not a descriptive element of the marks and is conceptually unrelated from the products the marks pertain to. The expression "Montepulciano" would instead refer to the place of provenance of the product.

In light of this, the Court confirmed that the identical use of the word "Nobile" in the Consorzio’s trademarks and the challenged sign amounted to infringement of the Consorzio’s rights even though other elements of the challenged mark were significantly different to the registered marks. The Court held the above resulted in a likelihood of confusion in the minds of the public or at least association. The Court held the infringing use extended to the use of the term "Nobile" in the Defendant's company name and domain name. This reasoning was in light of the principle of unity of distinctive signs provided under Article 22 of the Italian IP Code.

Claim for unfair competition

Finally, the Court rejected the claim for unfair competition for slavish imitation, deeming the labelling of the wines marketed by the Defendants and those sold by the Consorzio to be sufficiently graphically different to each other. The Court did, however, uphold the claim for misappropriation of the qualities linked to a genuine product.