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Commentary

Nosecco’s Trade Mark Appeal Falls Flat

Date: 8 October 2020

 

On 24 June 2020, the High Court handed down its judgment in Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata. The judgement dismissed an appeal from a decision of an IPO hearing officer that the protected designation of origin (PDO) for PROSECCO was protected under EU Law and that use of the trade mark NOSECCO for non-alcoholic sparkling wine breached the Common Market Organisation (CMO) Regulation art.103(2)(b), which protected PDOs against “misuse, imitation or evocation”.

 

In 2018, the French wine company Les Grands Chais de France (LGC) had applied for the following international trade mark designating the UK to cover non-alcoholic wines and non-alcoholic sparkling wines

in Class 32:

 

nosecco_219

 

The snappily named “Consorzio di Tutela della Denominazione di Origine Controllata PROSECCO” opposed the application. The Consorzio claimed that NOSECCO was closely associated in the minds of the public with PROSECCO, and it relied on numerous social media postings in which NOSECCO was regularly referred to as “alcohol-free PROSECCO”.

 

For its part, LGC denied that any such confusion existed. It stated that NOSECCO had been coined as a novel name to highlight the non-alcoholic nature of the goods and, because the suffix “SECCO” meant “dry” in Italian, it claimed that the mark would be interpreted as meaning that the wine was not secco, i.e. it was not dry.

 

LGC also claimed that the “NO” in “NOSECCO” would be understood as meaning “NOT PROSECCO” and that NOSECCO would be perceived by the public to indicate a “beverage which is absent of/not containing

PROSECCO … it is clearly a plain indicia away from the PDO, not towards it”.

 

However, Nugee J found that “NOSECCO” evoked “PROSECCO” and, therefore, the use of the mark NOSECCO was contrary to EU law under the Trade Marks Act 1994 (TMA) s.3(4). The judge also found that the hearing officer had been entitled to find that that the use of NOSECCO created a “sufficiently serious risk” that consumers would be deceived pursuant to TMA s.3(3)(b).

 

Comment

 

This decision is the latest in a number of decisions concerning PDOs which have involved a strict application of EU Regulation 1308/2013 that expressly prohibits any “evocation” and which have ended unhappily for the users of similar names; for example, the protected name Cognac and the dispute over Finnish marks featuring the word Konjakkia (see Joined Cases C-4/10 and C-27/10); the protected name Gorgonzola and the disputed designation Cambozola, used for a German blue cheese (see Case C-87/97); and the protected name Calvados and the disputed designation Verlados, used on a cider spirit produced in the Finnish town of Verla (see Case C-75/15). This judgment reminds us that the level of protection afforded to PDOs should be considered food for thought by paranomasiacs and is likely to be welcomed by pedantic foodies and producers of specialist produce alike. Cheers!

 

Our full article on this case will appear in the upcoming Entertainment Law Review.

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