With ruling no. 3575/2015 of 21 October 2015, the Company Matters division of the Florence District Court (whose jurisdiction encompasses IP matters) awarded a major victory to Consorzio del Vino Nobile di Montepulciano, a trading association representing the interests of grape growers and winemakers engaged in the production of Vino Nobile di Montepulciano, a wine originated in the area of Montepulciano, near Siena.
The Consorzio had sued 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 said use infringed its collective trademarks “Nobile”, “Vino Nobile” and “Vino Nobile di Montepulciano” as well as the designation of origin “Vino Nobile di Montepulciano”, and constituted unfair competition for misappropriation of merits and slavish imitation.
The defendants replied with counterclaims of revocation and invalidity of the plaintiff’s trademarks. They argued first that, as a result of the protection of the denomination of origin “Montepulciano d’Abruzzo” (where “Montepulciano” indicates a grape grown in the Southern region of Abruzzo), not only was the denomination of origin “Vino Nobile di Montepulciano” no longer protected, but the plaintiff’s trademarks had become misleading as to the origin of the product they distinguished, thus deserving revocation. By way of subordinate counterclaim, they had asserted prior use of the sign “Nobile Prima” as a trade name, domain name and trademark, claiming that the plaintiff’s trademarks should be declared invalid on the grounds of lack of novelty and registration in bad faith.
The Florence Court, however, rejected both counterclaims.
The Court found that “Vino Nobile di Montepulciano” (where “Montepulciano” is a geographical indication) had been recognised as a Protected Designation of Origin (PDO) since 1966 and was still protected, while the related collective trademarks, far from being misleading, differentiated the product (made from Sangiovese grapes) from the Montepulciano d’Abruzzo wine by identifying its geographical origin.
As for the alleged lack of novelty and registration in bad faith, the Court, accepting the evidence put forward by the Consorzio, noted that the designation of origin and the sign “Vino Nobile di Montepulciano”, also in its abbreviated forms “Vino Nobile” and “Nobile”, although registered only in recent years had already gained reputation long before the defendants entered the wine market. The first known use of the name “Vino Nobile”, the Court found, was in a document from the eighteenth century, while the first vintage of “Vino Nobile di Montepulciano” dated back to 1959. In addition, the name “Vino Nobile di Montepulciano” had been recognised as a PDO in 1966, while the Consorzio had been promoting and protecting the wine since 1992. Finally, the Court noted, when the plaintiff’s trademarks were used as keywords on Web search engines, most results referred to the plaintiff’s products.
In fact, the Court concluded, the plaintiff’s trademarks were not only valid, but had been infringed by the plaintiffs. The judges observed that, at the heart of all the trademarks in suit, there was the word “Nobile” (“noble” in Italian), a sign conceptually distant from the product and, as such, intrinsically strong. The geographical name “Montepulciano”, on the other hand, linked the product to the Consorzio. In the Court’s view, the trademark “Vino Nobile di Montepulciano” immediately called to the average consumer’s mind the well-known Tuscan wine, differentiating it from the Montepulciano d’Abruzzo.
In comparing these signs to the defendants’, the Court applied the doctrine that a strong trademark is infringed by another sign even though significant variations are made in the latter, when the former’s individualising core is left unaltered. In this context, ” … adding the word PRIMA after the word NOBILE in the defendant’s signs results in a harmless variant, unable to bring novelty and differentiation with respect to the plaintiff’s trademarks”. This, in the Court’s view, resulted in a likelihood of confusion for the public or at least association between the signs, even setting aside that the protection of well-known trademarks does not require likelihood of confusion. Accordingly, the defendants’ sign “Nobile Prima”, including the complex (figurative and descriptive) version used in the defendants’ bottle labels, were found to be infringing. For similar reasons, under the principle of unity of all distinctive signs, the Court found that the use of the words “Nobile Prima” as a company and domain name also infringed the plaintiff’s trademark rights.
The Court instead took a more multifaceted view on the issues of unfair competition. The judges dismissed the plaintiff’s slavish imitation claim, because of the substantial graphic diversity between the plaintiff’s and defendants’ bottle labels.
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One of the “Vino Nobile” labels
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The Defendants’ labels
The Court, on the other hand, upheld the misappropriation of merits claim, having found that the defendants had knowingly tried to appropriate the merits of the competitor’s product by using signs similar to the latter’s trademarks, which they were aware had a reputation on the market.
Having thus established trademark infringement and unfair competition, the Court enjoined the defendants from the use of the word “Nobile Prima” as a trade name, domain name and more generally as a distinctive sign, ordering the compulsory transfer of the domain name nobileprima.it to the Consorzio. The Court also awarded damages to the plaintiff, which it quantified on an equitable basis, and ordered the publication of the ruling in a newspaper of national relevance at the defendants’ expense.
The ruling, of course, is subject to appeal.