The protection of the PGI “Aceto balsamico di Modena”

In early 2023, in a ruling of considerable interest, the Milan Court of Appeal  ruled on the interference of the sign "Acetaia del balsamico" with the PGI "Balsamic Vinegar of Modena." 

The Consortium for the Protection of Balsamic Vinegar of Modena had asked the Court to partially reform the first instance judgment of the Court of Milan no. 4191/2021, which had rejected the Consortium's request for an injunction against the use, production and marketing of the product "Acetaia del Balsamico" for the alleged unlawful evocation of the PGI, in violation of Article 13(1)(b) of EU Regulation No. 1151/12, and commission of acts of unfair competition pursuant to Article 2598(2) and (3) of the Italian Civil Code.

The Court of first instance, after suspending the proceedings, pursuant to Article 295 c.p.c., due to the pending case between the appellant and another German company before the Court of Justice (CJEU December 4, 2019, Case C-432/18, Consorzio Tutela dell'Aceto Balsamico di Modena-Balema GmbH), had rejected the appellant’s claims, arguing that the Acetaia Balsamica di Trento products were not presented to the public with a name evocative of the geographical area that benefitted from the PGI protection of the Consortium.

The Milan court in its decision, recalled precisely what the Court of first instance had affirmed, and pointed out that, firstly, the protection provided by the registration of the protected name "Aceto Balsamico di Modena" cannot also be extended to the use of its individual non-geographical terms; and, secondly, that the non-geographical terms of the PGI in question, "aceto" and "balsamico," as well as their translations, do not enjoy the same protection conferred by the rules of Regulation No. 1151/12 to the Balsamic Vinegar of Modena PGI.

The conclusions of the first instance ruling were deemed shareable by the Court of Appeal, which, reiterated what the Milan court had already upheld, and maintained that the terms "aceto" and "balsamic" could not be considered evocative of the PGI.

Regarding the indices for assessing the unlawful evocation between the product and the PGI territory, in addition to arguing that the criterion of judgment should be homogeneous and applicable to all member states, the Court stated that in order for there to be an unlawful evocation, a sufficiently direct and unambiguous link between the disputed name and that of the protected PGI or PDO territory must present itself in the mind of the average European consumer. In the present case, the Court did not find such an evocative link because the name "Acetaie del Balsamico" does not bear any reference to the territory of Modena, and instead includes an association with the territory of Trentino.

The PGI protected by Reg. Reg (EC) 583/2009 and the trademark contested by the Consortium

Similarly, the terms "vinegar" and "balsamic" taken individually were not considered suitable to evoke the territory of Modena, as "vinegar" is a common and generic term as is the the adjective "balsamic," which can also be attributed to different products (candies, syrups, wines) and, in the present case, indicating only a vinegar that is characterised by a bittersweet taste.

Not even the similarity of the colour of the food, the shape of the glass container with which the product is marketed or the characteristics of the label and the method of sale and the placement in stores were deemed by the Court of Appeal to be sufficient to confirm the offense., The Court clarified that , the Consortium does not enjoy any exclusive rights over the product itself and the protection given to DOC and PGI geographical indications cannot extend to the point of prohibiting the reproduction of the characteristics observed in the specifications of the relevant product.