In January 2018, Les Grands Chais De France (“Les Grands”) filed a Madrid Protocol application to register their product label as a trade mark in countries including the United Kingdom. The product name “NOSECCO” is central to the mark as applied for, with the application covering ‘non-alcoholic wines; non-alcoholic sparkling wines' in class 32.
The UK designation was opposed by the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Consorzio), established to protect and promote the use of the name “Prosecco”, which is a protected designation of origin ("PDO") in the EU. As a PDO, use of the word Prosecco is reserved for wines that meet certain conditions, including that the wine is made from a specific grape, region, and cultivation method.
The Consorzio were successful in the opposition, because use of the mark NOSECCO would evoke and therefore suggest a connection with the Prosecco PDO, and also because the mark NOSECCO was likely to deceive the public as to the origin of the goods.
The Hearing Officer noted the high degree of similarity between the names NOSECCO and Prosecco, and between alcoholic and non-alcoholic wines. Consorzio's evidence had also demonstrated a clear reputation in the UK for Prosecco. On the question of potential deception, the inclusion of Italian words on the product label served to reinforce the incorrect assumption that NOSECCO originated in Italy despite it actually being manufactured in France. The fact that the NOSECCO product was sold in glass bottles similar to a typical Prosecco bottle, was also a key consideration in finding that deception was likely.
Les Grands appealed the opposition decision to the High Court, claiming a number of errors were made in reaching the decision. These were considered, but ultimately dismissed, with the appeal being found in favour of the Consorzio. Whilst this outcome is perhaps not unexpected, the decision does raise a number of noteworthy points:
The potential for a PDO to form a basis for opposition should not be overlooked, and the applied-for mark does not have to be identical to the PDO for such an opposition to succeed;
Consumers cannot be expected to have detailed knowledge of the requirements for use of a PDO, they merely have to believe the mark in question has some connection to the PDO;
The Appellant had criticised the lack of expert evidence in relation to similarity between the parties' goods. The Court stated that the similarity is obvious, and that in fact, the Appellant's own evidence reinforced this view, showing the NOSECCO product presented in a Prosecco-like bottle, served in flute-shaped glasses, used on celebratory occasions and described by reference to its colour, nose and palate in the same way that wine would be. The Appellant had therefore “gone out of its way to portray and market its product as being as similar to a sparkling wine as possible, save only that it has no alcohol”;
The Appellant had also attempted to dismiss evidence detailing posts on social media, on the basis that these were not first-hand evidence, and were provided without context. The Court found that such evidence demonstrated the genuine and unprompted perception of ordinary consumers, highlighting the use of hashtags including #noalcoholprosecco, #AlcoholFreeProsecco and even #kidsprosecco, stating that consumers evidently regarded NOSECCO as, or assumed it to be, a non-alcoholic version of Prosecco.
Interestingly, in mid-May 2020, a Madrid Protocol application for the word mark NOSECCO was filed in the name of Treasury Wine Estates UK Brands Limited (apparently unrelated to Les Grands), designating territories including both the UK and the EU, and covering goods including alcoholic, non-alcoholic and de-alcoholised wines. Assuming these designations are eventually published for opposition purposes, we would expect further challenges from the Consorzio to follow.
Originally published by Marks & Clerk, on June 2020
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