I wrote previously about the opposition of Nosecco's UK trade mark application by the Italian Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, ('the Consortio'). However, the fizz feud continued when the makers of Nosecco, Les Grands Chais de France SAS, appealed the decision of the UK Intellectual Property Office (UKIPO) Hearing Officer to The High Court.

Put a cork in it

The Hearing Officer upheld the Consortio's opposition on the basis of sections 3(3)(b) and 3(4) of the Trade Marks Act 1994. The Hearing Officer therefore found that Nosecco's mark was of such a nature as to deceive the public and that the use of the mark was contrary to EU law. Nosecco appealed the decision to the High Court on both of these grounds.

Prosecco prevails once more

In its appeal, Nosecco argued that the Hearing Officer:

  • gave inadequate reasoning;
  • gave inadequate reference to evidence;
  • substituted her own views where there were gaps in the Consortio's evidence;
  • relied on social media material and press articles which were secondhand and acontextual;
  • reached a perverse conclusion as to similarity;
  • didn’t give enough weight to the reason behind the Nosecco name choice; and
  • applied the wrong test in concluding Nosecco would gain an advantage as opposed to an unfair advantage.

The High Court was not persuaded by Nosecco's challenge or that the Hearing Officer erred in reaching the decision she did. On considering this matter the Court noted that; a decision maker does not need to recite all evidence before them, Hearing Officers can use their own expertise to make assessments and the Hearing Officer was entitled, if not obliged, to form a view as to consumers' presumed reaction – regardless of the creator's intentions. The appeal was dismissed.

Fizzled out

An appeal is not a re-hearing or second bite of the apple but instead a review of the decision maker's decision. In order to be successful an appeal must show that the original decision maker, here the Hearing Officer, made a distinct and material error of principle or was clearly wrong. Nosecco tried it's all to have the opposition heard again but the Court could not be persuaded that the Hearing Officer was not entitled to reach the conclusions she did.

Whilst the Consortio has prevented registration of Nosecco's mark, Nosecco remains available to purchase in UK stores. We will have to wait and see whether the Consortio continue the assertion of its rights and raises an action for infringement and/or passing off.