Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco

Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco

The Hearing Officer was entitled to find that the mark 'Nosecco' evokes the PDO 'Prosecco' within the meaning of Article 103(2)(b) of Regulation 1308/2013, as the image of Prosecco is triggered in the mind of the average consumer encountering the mark, particularly in the context of non-alcoholic sparkling wine. The goods are highly similar, and the use of the mark would give the applicant an unfair marketing advantage by riding on the reputation of Prosecco. There is also a sufficiently serious risk that the public would be deceived as to the nature or origin of the goods. The appeal is therefore dismissed.

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 Under Regulation 1308/2013, Absolute Grounds for Refusal (deceptiveness), Trade Mark Opposition, Likelihood of Confusion, Unfair Advantage
Intellectual Property Trade Marks European Union Law Protected Designation of Origin (pdo) Evocation Under Regulation 1308/2013 Absolute Grounds for Refusal (deceptiveness) Trade Mark Opposition Likelihood of Confusion +1 more

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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 Article 103(2)(b) of Regulation 1308/2013, justifying refusal under s. 3(4) TMA 1994
  2. 2 Whether the mark is of such a nature as to deceive the public under s. 3(3)(b) TMA 1994
  3. 3 Whether the Hearing Officer erred in her factual and legal assessment

Ratio Decidendi

The Hearing Officer was entitled to find that the mark 'Nosecco' evokes the PDO 'Prosecco' within the meaning of Article 103(2)(b) of Regulation 1308/2013, as the image of Prosecco is triggered in the mind of the average consumer encountering the mark, particularly in the context of non-alcoholic sparkling wine. The goods are highly similar, and the use of the mark would give the applicant an unfair marketing advantage by riding on the reputation of Prosecco. There is also a sufficiently serious risk that the public would be deceived as to the nature or origin of the goods. The appeal is therefore dismissed.

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed
  • Costs awarded to the Respondent in the sum of £2100