GEOGRAPHICAL INDICATIONS AND DESIGNATIONS OF ORIGIN 71 subparagraphs constitute an exception to the general prohibition to register, as a trademark, a geographical name, which is linked to the product. In this case, the geographical sign is connected to the protection of the product’s qualitative characteristics, related to the territory of origin. In any case, it is worth mentioning that there are some important differences between collective trademarks and DOs and GIs. First of all, designations of origin and collective trademarks may be used by any producer of the relevant geographical area, who respects the requirements established by the specification of production. On the contrary, collective trademarks may be used exclusively by the collective bodies’ members, who own the registered distinctive signs. Moreover, while collective trademarks are subject to revocation for vulgarisation, article 103 of the Regulation (EU) No. 2013/1308 expressly states that “Protected designations of origin and protected geographical indications shall not become generic in the Union within the meaning of Article 101(1)”. These differences highlight a different function: the protection of a strong public interest, connected to consumers’ rights and the promotion of local production, in the case of GIs and DOs, and the combination of the private interest of the associations of producers with consumers’ rights, in case of collective trademarks. Consequently, the most delicate issue is the possible coexistence of geographical collective trademarks with geographical indications and designations of origin. Despite some different doctrinal opinions, according to the well-established Italian case-law, DOs and GIs may freely coexist with collective trademarks. Among the very rare rulings on this matter, it is worth alluding to the decision of the Italian Supreme Court No. 10587, of 28 November 1996, which has stated that designations of origin and collective trademarks may coexist, in the presence of slight differences, if the requirements for the existence of both titles are met. Considering the wine sector, a Court of Florence’s ruling of 21 May 2015 has indirectly expressed the same principle, with the Court accepting the requests of the plaintiff – the Consortium of the wine Vino Nobile di Montepulciano (which comes from the Sangiovese grape variety, different from the Montepulciano d’Abruzzo), grounded on the collective trademark Vino Nobile and the Vino Nobile Di Montepulciano DOCG. In particular, the Court stated that the Nobile Prima trademark and the relevant domain name, registered since 2001, infringed the collective trademark Vino Nobile of the Montepulciano of Siena, thanks to its recognised notoriety. Moreover, the Court also ascertained that the use of the Nobile Prima trademark constitutes an act of unfair competition, according to article 2598 of the Italian Civil Code.
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