Vernaccia di San Gimignano Wins Trademark Battle in Spain

The Vernaccia di San Gimignano Wine Consortium obtains the cancellation of the Spanish trademark “Varnacia 1321“. The decision comes after two years of legal battle conducted with the support of Intellectual Property consultants from Bugnion Spa. According to the ruling, the Spanish trademark was deceptive as it unduly exploited the reputation of the Tuscan PDO.

The case began on May 13, 2022, when the Spanish company Gmarket requested registration of “Varnacia 1321” for wines in class 33. The name, with a clear reference to Vernaccia, included the year 1321, a symbolic date coinciding with the publication of the Divine Comedy, which explicitly mentions the Tuscan grape variety (“…This one, he showed with his finger, is Bonagiunta. Bonagiunta from Lucca: and that face beyond, more wrinkled than the others, held the Holy Church in his arms: from Torso he was, and purges through fasting the Eels of Bolsena and the Vernaccia….“).

The Consortium’s reaction was immediate, filing a formal opposition. The petition emphasized the evocative and deceptive nature of the trademark in relation to the Vernaccia di San Gimignano PDO. In 2023, however, the initial decision favored Gmarket, which managed to retain the trademark by limiting its use solely to wines conforming to the “Vernaccia di Oristano” PDO. A solution deemed artificial, since the trademark was actually being used for Spanish wines with no connection to Italian denominations.

The Consortium did not give up and filed an appeal, initiating a cancellation action for deceptiveness. The appellate decision, issued in recent days, reversed the outcome: the “Varnacia 1321” trademark was declared deceptive and removed from the Spanish register.

“This victory demonstrates how essential it is to believe in the legal protection guaranteed abroad for trademarks and designations of origin, and to invest in protecting the names linked to our territorial excellence – emphasizes attorney Paola Stefanelli of Bugnion –. Intellectual Property, when managed strategically, ensures that efforts to promote and enhance our PDOs and PGIs, in which Italy holds absolute primacy, are not undermined by fraudulent attempts to associate foreign products with the culture, history, and quality that has made Made in Italy famous worldwide.”

“The Consortium was founded first and foremost as the legal expression of the community of all winegrowers in the city of San Gimignano, with the task of protecting and promoting those wines that have, for centuries now, best represented our city and our territory: that’s why today we are even more proud to have achieved this important result,” declares Manrico Biagini, president of the Consortium.

Biagini also emphasizes the role of legal monitoring: “This success is the result of work that goes back a long way, with careful monitoring not only of foreign and international markets, but also and especially of various national trademark registers: because the most effective way to stop a threat at its inception is precisely to intercept these trademarks before they reach the market, through a monitoring service, thus minimizing any potential damage to our image and that of our winegrowers.”

The cancellation of “Varnacia 1321” represents an important precedent, protecting not only Vernaccia di San Gimignano but the entire system of Italian denominations, often subject to imitations abroad.