26 Aug 2020

The association responsible for protecting and promoting the use of the name 'Prosecco' – Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the "Consorzio") – has successfully opposed the registration in the UK of a stylised label containing the word NOSECCO (the "Sign") in class 32, for non-alcoholic wines and non-alcoholic sparkling wines[1].

The High Court has dismissed the appeal[2] of the trade mark applicant, Les Grands Chais de France SAS ("GCF"), a French producer of wines and spirits, from a decision by the UK Trade Mark Registry[3] in which the Hearing Officer had upheld the Consorzio's opposition.

The absolute grounds upon which the Hearing Officer had ruled were that the Sign should not be registered because it would be:

  1. Contrary to section 3(4) of the Trade Marks Act 1994 ("TMA") in that "its use is prohibited in the United Kingdom by an[y] enactment or rule of law or by a[ny] provision of EU law".

In this instance, the prohibition arose from PROSECCO having been declared a protected designation of origin ("PDO") in 2009, under Regulation 1308/2013 (the "Regulation"). The Hearing Officer invoked Article 103(2)(b) of the Regulation which provides that a PDO shall be protected against "any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as 'style', 'type', 'method', 'as produced in', 'imitation', 'flavour', 'like' or similar"; and

  1. Contrary to section 3(3)(b) of the TMA, the Sign is "of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)".

Evocation

Citing the Calvados decision[4], the judge agreed with the Hearing Officer that, although visual and phonetic similarities between the PDO and the Sign are factors for consideration when assessing whether there has been 'evocation', actual proof of a likelihood of confusion is unnecessary. Rather, it sufficient to show that a link is triggered in the mind of the average consumer between the protected name and the Sign. 

GCF had argued that the Sign, or specifically the objectionable part – NOSECCO – should be taken to mean that its non-alcoholic wines were 'not dry' ('secco' being the Italian for dry). However, the vast sales in the UK of PROSECCO (more than 900,000 hectolitres in 2017, exceeding sales of champagne), and the spate of comments in press articles and on social media to the effect that GCF's product was a non-alcoholic version of Prosecco, was sufficient evidence to support a presumption that the average consumer would link the Sign with the protected name even if they did not believe the product was actually Prosecco.

Therefore, GCF's product sold under the Sign was liable to evoke the protected name in the mind of the average consumer.

Deception

The Hearing Officer had held that the ground under section 3(3)(b) of the TMA was established because there was a serious danger that the average consumer would be deceived into believing that GCF's product was compliant with the requirements of the PDO, because they might regard NOSECCO as being '"derived from Prosecco; i.e. de-alcoholised Prosecco"[5].

GCF had criticised this finding on the basis that:

  • the NOSECCO product by its very nature (i.e. not being alcoholic) could never comply with the PDO
  • the Hearing Officer had not stated in what manner the NOSECCO product was not compliant with the PDO's specification.

On appeal, the judge rejected these arguments, holding that the average consumer would not have a detailed knowledge of the specification upon which the PDO was based. For a finding under section 3(3)(b), in order to prove deception, it was sufficient to show that there will be consumers who believe the NOSECCO product is alcohol-free Prosecco, i.e. that it originates from the region and producers of the authentic wine.

Further possible grounds

The Hearing Officer had rejected the Consorzio's complaints against the application for reasons of passing off because as per the Chocosuisse v Cadbury decision[6], being a trade association, the Consorzio did not have legal standing to bring such a claim without joining at least one of its members (something that it had failed to do). 

Also, the Hearing Officer had rejected the argument of the Consorzio that the application was filed in bad faith contrary to section 3(6) of the TMA. Even if the choice of NOSECCO had been opportunistic by being evocative of PROSECCO, on the case law[7], this would be an insufficient for assessing that there had been bad faith. One had to demonstrate acts which "fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined"[8].

The Consorzio had not appealled these findings on bad faith and passing off, but it did appeal the dismissal of its complaint that pursuant to Article 103(2)(a) of the Regulation in that NOSECCO constituted "direct or indirect commercial use of that protected name [emphasis added] –

  • by comparable products not complying with the product specification of the protected name; or
  • in so far as such use exploits the reputation of a designation of origin or a geographical indication".

The judge rejected the appeal and held that use of NOSECCO did not amount to use of PROSECCO because, quite simply, the names were neither visually nor aurally identical. He distinguished the circumstances of this dispute from an earlier case that had been brought by the Consorzio in the EU Intellectual Property Office relating to registration of a mark containing PRO&ECO, in which the Board of Appeal ("BOA") had held that a complaint under Article 103(2)(a) of the Regulation had been made out because the ampersand (&) in the middle of the sign would be read in Romanian as 'şi' and in Hungarian as 'és', creating a pronunciation that is almost identical to that of PROSECCO. Thus, the BOA had concluded that Romanian and Hungarian speakers would perceive PRO&ECO as an 'intelligent misspelling' of Prosecco. However, in this dispute, Mr Justice Nugee agreed with the Hearing Officer that the Sign and PDO were not the same and he was not prepared to hold that NOSECCO would be perceived as a misspelling of PROSECCO – intelligent or otherwise – so he agreed that Article 103(2)(a) was not a ground available to the Consorzio.

Comment

The decision is confirmation of how powerful a right is bestowed by the European regime for the protection of designated names, in that evocation can be established even in the absence of a likelihood of confusion.

The dispute is also a reminder of how high is the bar set for assessing bad faith, in that opportunism resulting in the desired result of evocation is, by itself, unlikely to succeed.

From a practical perspective, it is worthy to note that the judge was critical of how GCF's Grounds of Appeal had been drafted – running to 11 pages (and 44 paragraphs) without identifying each of the grounds separately and under numbered headings. Court of Appeal Practice Direction 52C asks that the Grounds should be a concise document setting out in which respects the judgment of the court or tribunal is wrong or unjust. The reasons for why the judgment is alleged to be wrong or unjust should be confined to the skeleton argument.

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[1] International trade mark application numbered WO 1398464

[2] [2020] EWHC 1633, 24 June 2020

[3] Decision O/691/19, 13 November 2019

[4] Viiniverla Oy v Sosiaali- ja terveysalan lupa- ja valvontavirasto (Case-75/15)

[5] Paragraph 34 of O/691/19

[6] Chocosuisse Union des Fabricants Suisse de Chocolat & Ors v Cadbury Ltd [1999] RPC 826 CA

[7] Red Bull GmbH v Sun Mark Limited & Or [2012] EWHC 1929

[8] Paragraph 134, ibid