Vernaccia “of Dante” has won in Spain. “Varnacia 1321” trademark canceled because it is misleading

In Dante Alighieri’s “Divine Comedy”, Canto 33 of the Inferno, the poet has Count Ugolino della Gherardesca pronounce the words, “più che ’l dolor, pot’ él digiuno” (fasting has overpowered grief). The words were written 700 years before the illustrious ancestor, Gaddo della Gherardesca, whose family inextricably linked its name to wine, especially in Bolgheri, and beyond (as we have narrated here). The Divine Poet was undeniably far-sighted when it came to wine, as Vernaccia, the only wine explicitly mentioned in his most momentous work, in Canto 24 of Purgatory, would prove victorious in Europe, and especially in Spain. The Consortium of Vernaccia di San Gimignano which protects Tuscany's great white wine, has won the legal battle against the “Varnacia 1321” trademark, which has been cancelled for unfairly exploiting the notoriety of the Italian denomination, whose vineyards are situated beneath the iconic, world famous medieval towers.
The controversy, the Consortium explained, began on May 13, 2022, when the Spanish company Gmarket applied to register the trademark “Varnacia 1321” for wines in Class 33. “The name rather explicitly and misleadingly calls to mind the PDO wine “Vernaccia”. Moreover, adding the year, 1321, specifically recalls the very year the “Divine Comedy” was published, and Dante Alighieri famously mentioned this Tuscan grape variety (“This, he pointed with his finger, is Bonagiunta. Bonagiunta from Lucca. And that face over there, more than the other, was quilted by the Holy Church and its arms: the Torso it was, and by fasting it purges the eels of Bolsena and the Vernaccia”)”, the Consortium reported, pointing out that Vernaccia was the only reference of a wine in Dante’s masterpiece. Therefore, the Consortium promptly filed a formal opposition, “requesting the application be rejected on the basis of “absolute grounds”, as the “Varnacia 1321” trademark is clearly evocative of the protected PDO wine”. Furthermore, the Consortium explained, “in spite of the evidence that the Spanish trademark referenced an absolute excellence of the Tuscan territory, the opposition concluded in 2023 instead granted an initial victory for Gmarket. To sidestep the objections that the Consortium had raised, Gmarket decided to limit the products to only wines compliant with the Protected Designation of Origin “Vernaccia di Oristano”. This was a contrived solution, which however did not correspond to reality. The 'Varnacia 1321' trademark was used for Spanish wines, devoid of any connection to the Italian denominations”.
The Tuscan Consortium therefore engaged the specialized consultancy of the Bugnion firm and responded by filing a revocation action for misleading of the “Varnacia 1321” trademark. “Finally, just recently, after a lengthy legal process lasting approximately two years, the appeal process was concluded, coming to a landmark decision. The Consortium’s arguments were upheld, and the “Varnacia 1321” trademark was declared misleading, and will therefore be removed from the Spanish trademark register”, the Consortium explained. “It is a victory that demonstrates how crucial it is to believe in the legal protection afforded to trademarks and Designations of Origin abroad, and to invest in protecting the names associated with our local excellent products”, Paola Stefanelli, lawyer of the Bugnion firm emphasized. “Intellectual Property, when managed strategically, ensures that the efforts to promote and enhance our PDO and PGI products, for which Italy holds absolute primacy, are not undermined by fraudulent attempts to associate foreign products with the culture, history, and quality that have made Made in Italy famous around the world”.
“The Consortium was created primarily as a legal support to the community of all the winemakers of the city of San Gimignano. Its task is to protect and promote those wines that for centuries have best represented our city and our territory. This is the reason that we are even more proud to have achieved this very important result”, Manrico Biagini, president of the Consortium of Vernaccia di San Gimignano Wine, explained. He then added, “this success is the fruit of long-term work, carefully monitoring not only foreign and international markets, but also, and above all, the various National trademark registries. The most effective way to crush a threat is to stop these trademarks before they reach the market, through a surveillance service, thereby minimizing any potential damage to the image of the brand, for us and for our winemakers. It is an enormous success, not only for Vernaccia di San Gimignano but for the entire system of Italian denominations, which are still too often object of “uncontrolled” imitations abroad”.