AO vs trademark: when territory prevails

The National Court of Appeals in Civil and Commercial Matters overturned a decision of the Argentine Trademark Office (INPI) and declared the Argentine trademark “SAN GIMIGNANO” (& Design) for wines invalid.

The Court held that the mark reproduces the protected foreign appellation of origin “Vernaccia di San Gimignano”, and reaffirmed the strict approach applied in Argentina to appellations of origin (AOs) and geographical indications (GIs) for wines.

This approach is consistent with Argentina’s international commitments under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The Consorzio del Vino Vernaccia di San Gimignano sought the invalidation of the trademark “SAN GIMIGNANO” (class 33, wines), of 2017, owned by MEVI S.A.

INPI had rejected the claim. It reasoned that the protected designation was “Vernaccia di San Gimignano”, not “San Gimignano” on its own. It also noted that the trademark pre-dated the formal recognition of the AO.

The Court disagreed and revoked INPI’s decision.

Division I held that:

• Trademarks incorporating a prior foreign GI, particularly for wines, must be refused or invalidated, unless they were acquired in good faith before the GI became protected in its country of origin, following Article 24.5 of the TRIPS Agreement.
• The fact that a appellation of origin includes additional terms does not justify the trademark appropriation of its geographical element, especially where such use may mislead consumers as to the true origin of the product.

In the wine sector, it is not necessary to prove actual confusion to invalidate a trademark that incorporates a protected appellation of origin or GI. As a result, the trademark was declared invalid.

The Court relied on:

• Argentine Trademark Law 22,362, which prohibits the registration of Aos and GIs, whether domestic or foreign.
• TRIPS, which grants enhanced protection to wine Aos and GIs, including against evocative or partial use.

The ruling sends a clear signal to the market: in wines and spirits, trademarks incorporating protected place names are highly vulnerable to invalidation, even after registration, save for narrow good-faith or pre-TRIPS exceptions.