Brands and labelling of wines

With this article we intend to expose briefly some of the main aspects relating to trade marks and labeling of wines, with the intent to return to and deal with, in following actions, various specific and of study topics of the subject in question.

Firstly, it must be said that the labelling of wines has always been the subject of a complex and comprehensive national and EU legislation – from 1999 to the present days – which redrew the lines of the organization of the new common market of wine.

In particular, the matter of the assignment, designation, presentation and protection of wine products is primarily governed by EC Regulation No.1234/2007, by its implementing regulation EC Regulation No.607/2009 and following amendments and by the Decree No.61 of 2010 (Protection of designations of origin and of geographical indications) as well as by the Ministerial Decree 13th August 2012, which is the national implementation of the aforementioned Community Regulations.

Community law and the corresponding national implementing legislation distinguish preliminary mandatory information and optional information to use on the label for the presentation of different wines, establishing the way in which they must be affixed.

Mandatory information: the designation of the category; the alcohol title as a unit or half–unit percentage; the nominal volume of the container; the indication of the bottler; the indication of origin; the indication of the importer (if the wine is imported); the indication of the sugar content; the lot number of the batch; the indication of the allergens.

Optional information: the vintage (provided that 85% of the wine is derived from grapes harvested in the indicated year); the name of vine varieties (provided that 85% of the wine is derived from grapes from these vines); the content of the residual sugar; the Community symbol; the traditional terms (such as Riserva, Passito, etc.); the name of the Company (other than the name of the producer, importer or seller), to say Abbey – Castle – Tower – Rocca – Villa, provided that wine is made from grapes harvested in the land cultivated by the Company and the names do not contain geographical references reserved to DO and IG; production method (aged or aged in barrels).

Therefore, also the brand falls in the merely optional indications, despite its importance and its distinctive strength is undeniable and attractive to the consumer.

An issue of particular interest in the subject of emblems for wine products concerns the prohibition of using trademarks or companies containing geographical names that coincide with DO and IG areas.

The prohibition is contained in the art.20 of Legislative Decree No. 61/2010 and the European Regulation No. 1308/2014: the purpose of the rule would be the interest of protecting the designations of origin and geographical indications from mislead encroachments towards consumers, but at the expense of the right of Wineries to indicate the respective locations in their communication materials (websites, brochures, catalogues, etc.).

This prohibition appears to have been implemented even in the Vine and Wine Consolidation Act – at the time still under review in the Camera (XVII Legislature – C2236) – that, by equating the label to the materials of business communication, in the art.53 prohibits to the companies in the wine sector to put on them their own region of belonging, thereby causing the reaction of several professional associations, complaining a failure to distinguish between real labelling and information equivalent to labelling.

Effectively, are punishable: all companies that report on their communication materials, from websites to brochures to catalogues of products to custom cartons, the name of their region of belonging, if this coincides with a DO or IG not produced by the company.

However, in a recent court case where the Ministry of Agricultural Policies and the "Vermentino di Maremma" and "Moro di Capalbio" trademark owners argued about the alleged violation of the "Maremma Toscana" IG and the "Capalbio" DO, jurisprudence highlighted the purely hypothetical nature of a conflict between brands bearing geographical indications and the geographical indications in themselves, declaring the uselessness of the conflict rules drawn up by the EU for the co–existence between the two.

In effect, the Rome Court has held that the marks at issue would be cancelled, stating that «those who produce wine in a protected geographical area has the possibility, under the conditions provided by law, to obtain that it is marked, as appropriate, by a controlled designation of origin or a typical geographical indication, but can not use these latter as trade marks or as elements of trade marks.

In effect, the designations of origin and indications of origin perform a different function than what is typical of the brand: this latter has a distinctive purpose, with no significant values; the DOC and IGT, in contrast, are signs that guarantee the origin, nature and quality of the products; such signs have always been used to guarantee the origin of the product from a geographically determined area to which consumers traditionally associate a consistent quality that comes from environmental and human factors.

If a brand could reproduce a controlled designation of origin or a typical geographical indication not corresponding to the place of production, the proper goal of the indication of origin would be thwarted and the consumer would be not protected as to the origin of the product. If, by contrast, it was allowed to match the brand with the designation that distinguishes the geographical area of the DOC or IGT which belongs to the product (with the assumption that this latter can boast the specific indications of origin) would not be guaranteed to the trade mark no individualizing capacity: effectively, the art. 13, letter. b) CPI forbids the registering of a trade mark consisting of generic designations or descriptive indications, as the signs that serve to designate the geographical origin of products. In conclusion, therefore, the overlap between brands and indications of origin is excluded: on the one hand as the deceptive use of the brand is prohibited, on the other hand as it is not permitted to use trademarks with descriptive content and devoid of distinctive attitude».

This is, however, an interpretation of the rules in question, but the actual cases that may occur are varied and require a specific and individual evaluation because there may be different conclusions.

Certainly, the registration of a trademark for a wine product is an operation of fundamental importance, as it is, in effect, the only element that the consumer evaluates at the time of choice, and it must be done in full respect of all the various rules that now have proliferated in this area at national and EU level. For more information contact winesandwine