German Balsamico?

The protection of the name ‘Aceto Balsamico di Modena’ does not extend to the use of the non-geographical terms of that name such as ‘aceto’ and ‘balsamico’

The name ‘Aceto Balsamico di Modena (PGI)’ (balsamic vinegar from Modena, Italy) has been registered since 2009 in the register of protected designations of origin (‘PDO’) and protected geographical indications (‘PGI’).

Balema is a German company that produces and markets vinegar-based products made from wines from Germany. It uses on the labels of those products the terms ‘balsamico’ and ‘deutscher balsamico’.

Consorzio Tutela Aceto Balsamico di Modena, a consortium of producers of products designated by the name ‘Aceto Balsamico di Modena (PGI)’, requested that Balema refrain from using the term ‘balsamico’.

The German Bundesgerichtshof asked the Court of Justice to determine whether the protection of the name ‘Aceto Balsamico di Modena’, which is conferred by the regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs covers only that entire name, that is ‘Aceto Balsamico di Modena’, or extends to the use of the non-geographical terms of that name, that is ‘aceto’, ‘balsamico’ and ‘aceto balsamico’.

In the judgment C-432/18 of December 4, 2019, the Court declared that the protection of the name ‘Aceto Balsamico di Modena’ does not extend to the use of the individual non-geographical terms of that name.

The Court emphasised that the registration of the PGI at issue and the protection deriving from it cover the name ‘Aceto Balsamico di Modena’ as a whole, as it is that name that has an undeniable reputation on the national and international market. In contrast, the non-geographical terms of that PGI, that is ‘aceto’ and ‘balsamico’, and their use in combination and in translation cannot benefit from that protection, especially because the term ‘aceto’ is a common term and the term ‘balsamico’ is an adjective that is commonly used to refer to a vinegar with a bitter-sweet flavour.

The Court also observed that the terms ‘aceto’ and ‘balsamico’ appear in the registered PDOs ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’ without their use infringing the protection conferred on the PGI at issue.