Dispute Resolution

The Italian Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, (‘the Consortio’) once again puts a cork in attempts to register a UK trade mark which evokes Prosecco.

Burst bubble

Nosecco is an alcohol-free sparkling wine which hit UK shelves in 2018. Already holding an international trade mark registration for their ‘Nosecco’ label, the French producers behind the beverage sought UK protection when launching into this new market. However, these plans fell flat when the Consortio, which looks after Prosecco’s protected designation of origin (‘PDO’), opposed the application.

Rise to the top

For a product to be protected by a PDO, it must be produced, processed and prepared in one area and hold distinct characteristics from that area. UK examples of PDOs include, Orkney lamb, Jersey royal potatoes and Cornish clotted cream.

For a beverage to be considered Prosecco, it must meet such PDO requirements as being from a specified grape-growing area in North East Italy; made primarily from the Glera grape; and marketed in glass bottles, with strict labelling requirements. These specifications were not met by Nosecco.

Hiccup

In its opposition, the Consortio claimed, amongst other grounds, that the Nosecco mark would deceive the public as to the origin of the goods and that it breaches European Parliament and Council Regulations protecting PDOs.

Nosecco argued that they have never used the name ‘Prosecco’ in relation to its product. ‘Secco’ is a descriptive term for ‘dry’ in Italian. The brand name is therefore a made-up, play on words to show that the product is ‘Not Dry’ – as it is a sweet-style, sparkling, non-alcoholic wine.

However, the UK Intellectual Property Office (‘UKIPO’) found in the Consortio’s favour. It upheld the opposition and refused protection of the international registration in the UK. The UKIPO acknowledged that the name ‘Nosecco’ did not constitute use of the protected Prosecco name but that it evokes the PDO Prosecco due to:

  •  the visual and aural similarities between the words Prosecco and Nosecco;
  •  the fact the mark applied for looks like a typical wine label; and
  • as both beverages are to be drunk in the same way – as ‘sociable’ drinks.

The application was therefore in breach of article 103(2) of Regulation 1308/2013 and s.3(4) of the Trade Marks Act 1994.

Raise a glass

This decision follows in a long list of actions brought by the Consortio who are stringent in protecting Prosecco’s rights. One such instance we discuss further here – where they prevented the registration of ‘Pawsecco’ as a UK trade mark for its edible pet treats.

The Consortio’s success in such actions highlights the strength a PDO can have over a trade mark. This is particularly so as the Nosecco mark was already protected by an international registration. As in this case, PDO holders benefit from the lower threshold of mere evocation of a PDO for a mark to be deemed in breach. Unlike trade mark infringement, no likelihood of confusion is required. It is enough for the consumer to link the mark/product to the protected designation.

Within the minefield of intellectual property infringement, it is important for food and drink producers to be aware of PDOs. They can operate as a robust way of protecting a product with heritage but are also something to be aware of when developing flavour ideas and brand names. Even if careful not to directly utilise a protected name, careful consideration needs to be given as to whether it could still be said to evoke a PDO, which can be a fine line – or wine in this case.

Cara McGlynn

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