No protection for Grana without the adjective "Padano"

On February 17th, 2023, the Court of Turin ruled on an action brought by the “Consorzio per la tutela Grana Padano D.O.P.” against Caseificio Fiandino which related to an alleged evocation and/or unlawful direct or indirect use, including under Article 13 of EU Regulation 1151/2012, of the Grana Padano PDO (Protected Designation of Origin) and the Riserva category, through the defendant's use of the sign "Gran Riserva Italia." 

The name "Grana Padano" is included in the list of national PDOs recognised by Implementing Regulation (EU) No. 584/2011 and protected by Article 13 of EU Regulation No. 1151/2012 on quality schemes for agricultural products.

The same protection is accorded to the "Riserva" sign, relating to cheese wheels aged for more than 20 months, which stipulates in the Grana Padano Specification that a second mark must be affixed to the heel of the most aged wheels. This second sign consists of a circular design, crossed transversely in the centre by a large band bordered by a parallel upper and lower strip; in the centre of the band is inscribed the word "Riserva," in a smaller font; inside the upper bezel are inscribed the word "oltre," in capital letters, and the number "20," while inside the lower bezel is inscribed the word "mesi," also in a smaller font.

The action brought by the Consorzio originated from their discovery, at some stores in the Messina’s province, of samples of hard cheese used for grating, produced and marketed by Caseificio Fiandino (not belonging to the list of producers of PDO Grana Padano), which was very similar to PDO Grana Padano, with a hot-branded impression of a logo on the heel bearing the words "Gran Riserva Italia", resembling the one protected by the Grana Padano Specification. The Consorzio, therefore, sued the other party alleging the illicit evocation and/or the illegitimate direct or indirect use of the Grana Padano PDO and in particular that of the Category Riserva. The plaintiff’s aim was to force the defendant to cease the use of terms "GRAN" and "RISERVA".

However, the Court rejected the claims made by the Consorzio as it did not consider that the evocation or direct or indirect use under Article 13 of EU Regulation No. 1151/2012 had occurred.

In particular, the Court of Turin held that the word "GRAN" used by the defendant’s cheese factory is not evocative of the word "GRANA," both because it is merely an adjective referring to the generic noun "RISERVA," and because “GRAN,”, being a generic word in the Italian language (meaning “BIG”), must be considered freely usable. Again, according to the Court, the term "GRANA," in addition to being a descriptive word, has its own value only when accompanied by the adjective "PADANO," since the essence and rationale of the protection invoked is embodied precisely in the geographical origin.

Similarly, the word "RISERVA" was held to be a commonly used word whose use could not be deemed illicit itself. Then, in assessing the joint use of the words and the overall name used by the cheese factory, the Court pointed out that the term "GRAN RISERVA ITALIA" is in no way evocative of the term "GRANA PADANO RISERVA," precisely because in the protected name the relevant reference is to the noun "GRANA" and the association with the geographical connotation "PADANO" appears to be necessary. Furthermore, in the name used by the defendant, the words "RISERVA ITALIA," to be identified as the "heart" of the adopted sign, without any reference to the origin from the Po Valley, appears to have a predominant character.

As a result, the Court of Turin found no evidence of evocation or direct or indirect use under Article 13 of EU Regulation No. 1151/2012.

It should be noted here that this decision is in conflict with a ruling issued on June 8, 2022 by the Court of Venice, according to which, in a very similar case, the term "GRANA" taken on its own was not considered generic, stating that it was sufficient to indicate a type of cheese traced back to "Parmigiano Reggiano" and "Grana Padano," and therefore to cheeses having a specific territorial origin.