In 2018, Les Grands Chais de France SAS applied to obtain trade mark protection at the UK IPO for the figurative mark below:
The application was opposed by the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, the consortium responsible for protecting the designation of origin (PDO) in respect of PROSECCO. They were concerned that the PROSECCO name might be watered down (excuse the pun) with the presence in the market of the NOSECCO brand. All PDOs require compliance with a restrictive specification before use of the mark is permitted on goods – in the case of PROSECCO, the specification requires that particular methods of production must be used; that the natural alcohol level must be at least 9%; at least 85% of the contents of a bottle must be derived from a single grape variety (Glera) and the grapes must be grown within nine specified provinces in Northeast Italy.
The opposition was based on four grounds:
- (i) that the application was made in bad faith;
- (ii) the consortium owned the legal right to prevent passing off (both of which were dismissed );
- (iii) that under s3(4) Trade Marks Act 1994 the NOSECCO mark would misuse, imitate or evoke the PDO; and
- (iv) that, contrary to s3(3)(b) of the Act, the NOSECCO mark, if granted registration, would have the potential to deceive the public as to the nature, quality and geographical origin of the goods.
As you will know, appeals cannot revisit the arguments of court of first instance unless the original hearing officer had made a glaring error of judgment. In the absence of this, the Judge (Mr Justice Nugee) would not be drawn back into the realms to whether the hearing officer had drawn the wrong conclusions from the evidence at the hearing, particularly with regard to the social media and other contemporaneous consumer evidence.
Despite the Appellant’s attempts to repeat its assertions that ‘Nosecco’ referred to the lack of alcohol in its goods and that it was a parody of the PDO indicating that it wasn’t prosecco, the Judge reasserted that all that is needed is a link in the mind of the public and that actual confusion and/or deception are not necessary.
The appeal therefore failed on all grounds and the Appellant was left feeling very flat indeed.
If you would like to know more about this sparkling case, or about trade mark protection in general, then please contact Laura Trapnell, head of our IP team.