Life is hard for the PGI vinegar "Aceto Balsamico di Modena"

In a European context where the Court of Justice of the European Union has, in recent years, issued a chain of interpretative judgments generally very favourable to #geographical indications (see, in particular, cases C-44/17 #scotchwhisky, C-614/17 #QuesoManchego, C-490/19 #Morbier), one must record the tightness with which the assessment of interference between geographical indications and trade marks is carried out where the conflict lies in a term considered ‘generic’. Well, the terms ACETO and BALSAMICO, even though they are part of the protected geographical indication ACETO BALSAMICO DI MODENA, do not seem to have the right and access to any protection.

This is the point of view expressed by the Court of Appeal of Milan, which in its ruling of 18 January 2023, in rejecting the appeal by the Consortium for the Protection of Aceto Balsamico di Modena, confirmed the decision issued at first instance by the Court of Milan on 17 May 2021. This was a very articulate and in-depth decision, in which it was affirmed that the terms ACETO and BALSAMICO are non-evocative of the PGI, not characterising, nor can they be considered traditional non-geographical names and as such deserving of protection.

The terms ACETO and BALSAMICO, also in the wake of the Judgment of the Court of Justice in case C-424/18 (Consorzio di Tutela dell’Aceto Balsamico di Modena Vs Balema GmbH), are in short ‘downgraded’ to purely generic terms and as such freely available to all European operators. Which, in the opinion of the Milan judges, entirely excludes the possibility that the use of these words in a trade mark could create an #evocative, direct and unequivocal #link between the product bearing the mark and the PGI product.

According to the Court of Appeal’s reasoning, the terms ACETO, BALSAMICO and the sequence ACETO BALSAMICO, are indeed entirely common and not individualising, and the manner of presentation of the disputed product is not to be considered evocative of the PGI.

This is a decision that will fuel debate and is not entirely convincing, for several reasons. For example, the opinion poll carried out by the Consortium to measure the perception of the term ACETO BALSAMICO by Italian consumers does not seem to have been adequately weighted.

Moreover, one has the feeling of being faced with a great logical contradiction with respect to the trend set by the Court of Justice: on the one hand, a term such as ACETO BALSAMICO, even though included in the PGI, is denied any protection because it is not geographical, not characteristic, it is generic, etc., while on the other hand, with respect to the use of a term such as GLEN (case C-44/17 #scotchwhisky), even though not included in the designation, the evocative link has been recognised without any ifs and buts.

From another point of view, we note once again, but this is the case throughout Europe, how often the national judgments of the member states where the Indications of Origin origin originated have a restrictive approach to the protection of designations, in contrast to the Court of Justice, which has so far been very generous with designations in virtually all the situations analysed, with the sole exception of the PDO Aceto Balsamico Tradizionale di Modena and therefore, indirectly, also of the PGI Aceto Balsamico di Modena…

Boris Osgnach