Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco [2020] EWHC 1633 (Ch) (24 June 2020)

Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco [2020] EWHC 1633 (Ch) (24 June 2020)

The Hearing Officer was entitled to find that 'Nosecco' evokes 'Prosecco' within the meaning of Art 103(2)(b) of Regulation 1308/2013, triggering the image of Prosecco in the minds of consumers, and that there was a sufficiently serious risk of deception as to the nature of the goods; thus, the opposition under s.3(4) and s.3(3)(b) TMA 1994 succeeded.

Citation
[2020] EWHC 1633 (Ch)
Parties
Applicant and Appellant: Les Grands Chais de France SAS; Opponent and Respondent: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco
Jurisdiction
England and Wales
Judgment Date
24 June 2020
Procedural Posture
Trade Mark Appeal / Appeal From UK Trade Mark Registry Opposition Decision
Outcome
Appeal dismissed
Legal Topics
Protected Designation of Origin (pdo), Evocation of PDO, Deceptive Trade Marks, Absolute Grounds for Refusal, EU Regulation 1308/2013, Trade Marks Act 1994 S.3(3)(b) and S.3(4)
Intellectual Property Trade Marks EU Law Protected Designation of Origin (pdo) Evocation of PDO Deceptive Trade Marks Absolute Grounds for Refusal EU Regulation 1308/2013 +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 14 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Les Grands Chais de France SAS

Applicant and Appellant

Consorzio di Tutela della Denominazione di Origine Controllata Prosecco

Opponent and Respondent

Procedural Posture

Trade Mark Appeal / Appeal From UK Trade Mark Registry Opposition Decision

Legal Issues

  1. 1 Whether the mark 'Nosecco' evokes the PDO 'Prosecco' under EU Regulation 1308/2013 Art 103(2)(b)
  2. 2 Whether registration of 'Nosecco' is prohibited under s.3(4) TMA 1994
  3. 3 Whether the mark is of such a nature as to deceive the public under s.3(3)(b) TMA 1994

Ratio Decidendi

The Hearing Officer was entitled to find that 'Nosecco' evokes 'Prosecco' within the meaning of Art 103(2)(b) of Regulation 1308/2013, triggering the image of Prosecco in the minds of consumers, and that there was a sufficiently serious risk of deception as to the nature of the goods; thus, the opposition under s.3(4) and s.3(3)(b) TMA 1994 succeeded.

Court Disposition

Appeal dismissed

Orders

  • Registration of 'Nosecco' refused
  • Costs awarded to Consorzio in the sum of £2100