Burges Salmon LLP - UK
The UK High Court has now ruled on an appeal against a UK Trademark Registry decision involving the protected designation of origin (PDO) for Prosecco. The court dismissed the appeal, finding that a device mark incorporating the term ‘Nosecco’ was evocative of and deceptive in relation to the earlier PDO.
Les Grands Chais de France SAS (Les Grands) applied for a UK designation of an international trademark registration in 2018 for the device mark below covering non-alcoholic wines, which it used in relation to white and rosé sparkling non-alcoholic wines.
The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco is an association tasked with promoting and enforcing the PDO Prosecco. First mention of this name in relation to wine produced in the village of Prosecco in Italy dates back to 1382. To be able to use the PDO Prosecco, at least 85% of a wine must be made from the single grape variety Glera, the grapes must be grown in a specific area in Northeast Italy, and the wine must have a minimum natural alcohol strength of 9%, among other requirements. In 2017 more than 97 million litres of Prosecco were exported to the United Kingdom.
Trademark Registry Decision
The Consorzio opposed Les Grands’s UK designation on various grounds, including that the NOSECCO mark was deceptive and that its use was contrary to EU law. The UK Trademark Registry upheld the opposition on both of these grounds. The opposition was rejected in relation to additional bad-faith and passing-off grounds, with the hearing officer noting that “even if evocation of Prosecco was the stated intention, sailing close to the wind does not, of itself, indicate opportunism or bad faith”.
Les Grands appealed, although to no avail.
High Court Appeal Decision
Les Grands argued that the hearing officer had erred in finding NOSECCO to be deceptive and contrary to law. While the grounds of appeal were in effect a challenge to the hearing officer's conclusions on the facts, the High Court’s role on appeal was to review the decision – it was not a re-hearing.
In terms of process and assessment of evidence, Mr Justice Nugee confirmed that:
- the hearing officer had been entitled to find as she did and had drawn correct and supported conclusions from the evidence before her;
- while there is a duty to give reasons for a decision, it is not necessary for the registry/court to set out in detail all of the evidence and all of the reasoning that has led it to its conclusions; and
- there is no requirement for an opponent to provide evidence of consumers actually establishing a link between the disputed term and the protected term; the registry/court can form its own assessment as to the presumed reaction of the public and likelihood of this link being made (albeit there was such evidence in this matter).
Taking a more detailed look at whether use of the mark was contrary to EU law, Nugee agreed that its use would be contrary to Article 103(2)(b) of EU Regulation 1308/2013 which protects a PDO against any “misuse, imitation or evocation”.
Evocation “covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected."
(Case C-87/97 Consorzio per la Tutela del Formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH&Co. KG). Further, evocation is not equal to likelihood of confusion.
Nugee confirmed that it seemed to him to be “a plain case of the one evoking the other” (ie, the NOSECCO mark evoking the PDO Prosecco in the minds of the average consumer). This was supported by evidence of consumer views from social media and press articles, including quotes such as “Makes me laugh that the nonalcoholic Prosecco they gave us at work is called Nosecco” and “UK Retailer Asda Debuts Private-Label Alcohol-Free Prosecco”, which Nugee found particularly helpful in showing genuine and unprompted consumer perception. Les Grands’s confused arguments as to the thinking behind its choice of name also did not help its case, particularly in referencing the name as a clever “parody of Prosecco”.
Nugee likewise approved the hearing officer’s entitlement to find that the mark would deceive, as consumers are likely to believe that goods sold under NOSECCO have some connection with Prosecco despite there being no such connection.
The appeal was dismissed, with the UK designation refused protection.
Given the vast reputation and popularity of Prosecco in the United Kingdom, this decision is unsurprising. However, decisions relating to PDOs are relatively rare and so it is positive to have confirmation of the concepts to be applied and affirmation that these matters must be assessed differently to pure trademark oppositions, as evocation is not the same as likelihood of confusion.
Also of interest is the fact that Nugee noted at the end of this decision that the hearing officer was correct in finding that the Consorzio’s argument under Article 103(2)(a) of EU Regulation 1308/2013 should fail because it requires use by the third party of "that protected name" and Nosecco is not Prosecco. This must be correct, as this part of the article is more akin to a double-identity trademark argument.
It is yet to be seen whether Les Grands will withdraw and cease all use and sales of Nosecco in the United Kingdom following this registration-related decision or whether further action may be required by the Consorzio in this regard.