In a judgment delivered on 11 September 2025, the Court of Justice of the European Union (CJEU) reaffirmed that an earlier trademark — even a well-known one — cannot prevail over a protected designation falling under Regulation (EC) No 1493/1999.
An identical denomination, two distinct intellectual property rights
The Italian wine company DUCA DI SALAPARUTA owns several trademarks consisting entirely or partly of the term SALAPARUTA. The word sign “SALAPARUTA” was first registered in 1989 as an Italian national trademark (No. 511 337), and later in 2000 as an EU trademark (No. 001302835), both covering “wines” (class 33).
The wines sold under this name originate from the area around Casteldaccia (Province of Palermo), with no connection to the municipality of Salaparuta (Province of Trapani). Wines produced within this geographical area have benefited since 2006 from the Italian controlled designation of origin (CDO) “Salaparuta,” which was elevated to EU level when the PDO was registered on 1 August 2009.
DUCA DI SALAPARUTA brought proceedings before the Italian courts seeking the cancellation or invalidity of these appellations, arguing that they were misleading as they were identical to its earlier trademarks, which it claimed to be well-known.
A dispute concerning the legal framework governing trademark/PDO conflicts
In a judgment of 16 February 2021, upheld by the Milan Court of Appeal on 5 May 2023, the Italian courts dismissed the company’s claims on the basis of Regulation (EC) No 1493/1999, which applied when the CDO was recognized.
As a result:
The designation of origin prevails over the earlier trademark;
To continue exploiting its trademarks, the owner must demonstrate that the conditions for coexistence are met — which is, in practice, very difficult.
To escape this unfavorable regime, the company lodged an appeal before the Italian Supreme Court, arguing that:
The national CDO was replaced in 2009 by the EU-level PDO;
Therefore, the regulations adopted after 1999 should apply.
The Italian Supreme Court referred two preliminary questions to the CJEU, the first of which concerned the applicable legal text.
This question is crucial because:
The later regulations introduced a mechanism allowing refusal of PDO registration where there is a risk of confusion with a well-known earlier trademark;
The trademark owner no longer needs to demonstrate the conditions of coexistence to continue using its trademarks.
The rule confirmed by the CJEU: Primacy of designations recognised under the 1999 Regulation
The CJEU confirmed the analysis of the Italian courts: the PDO must be viewed not as a new designation, but as a mere extension of the wine designation already protected at national level under Regulation (EC) No 1493/1999.
The PDO does not replace the CDO.
Direct consequence: The protection mechanisms for well-known trademarks introduced by Regulations (EC) No 1234/2007, No 479/2008, and (EU) No 1308/2013 do not apply retroactively to wine designations recognised under Regulation 1493/1999.
Practical impact for owners of wine trademarks prior to a designation recognised under the 1999 regime
- No cancellation of the designation is possible, even in the presence of a well-known trademark;
- The only potential outcome is coexistence, provided the trademark owner can demonstrate that:
- The trademark has a link to the identity of its original owner;
- It was registered at least 25 years before the recognition of the designation;
- It has been used continuously throughout that period.
If a conflict — or risk of conflict — arises between your trademarks and a protected designation, our team can assist you in preserving your rights, securing coexistence, and defining an appropriate defence strategy.
December 2025
Contributing authors
Romain Pech
Attorney-at-Law
Julia Kirner
Legal Intern
