Protected designation of origin: NOSECCO evokes PROSECCO
The UK Intellectual Property Office (UKIPO) has refused the UK designation of the international registration for the mark containing the word “NOSECCO” (as shown below) and covering “Non-alcoholic wines; non-alcoholic sparkling wines” in class 32, finding that it evokes PROSECCO, which is a protected designation of origin (PDO).
To be granted PDO status, a product must be produced, processed and prepared in one area and be made using distinct local knowledge. Other examples of PDOs include Jersey Royal potatoes, Feta cheese and Parma ham.
The UK designation was opposed by the Italian Trade Consortium responsible for the PDO for PROSECCO. As a PDO, PROSECCO can only be used for wines which meet specific requirements: they must derive from a specified grape growing area in North East Italy and be made primarily from the Glera grape. PROSECCO must also be marketed in glass bottles, with strict labelling requirements.
The opposition was based on, amongst other grounds, Section 3(4) of the UK Trade Marks Act 1994 in conjunction with Article 103(2)(b) of Regulation 1308/2013 of the European Parliament and Council, which provides that a PDO shall be protected against “any misuse, imitation or evocation”.
It is not necessary for there to be a likelihood of confusion for Article 103(2)(b) to apply. What is required is that the PDO is evoked: it is sufficient that when the consumer is confronted with the mark at issue, the image triggered in their mind is that of the product whose designation is protected.
Evocation becomes more likely the more similar the goods are to those protected by the PDO. Despite the applicant’s argument that the goods are not similar because the contested goods do not contain alcohol, the hearing officer concluded that they are in fact highly similar. It was found that the contested goods are in competition with alcoholic drinks, are sold in close proximity to alcoholic wines in supermarkets, and their purpose is to be drunk in the same way as wine or other “sociable” drinks.
The applicant claimed that the inspiration for NOSECCO came from the combination of “no” as a negative and “secco”meaning dry, and that NOSECCO is a pun or play on words showing that the goods are “not dry” (but are a sweet-style sparkling non-alcoholic wine).
The hearing officer was not convinced by this and found that given the reputation of PROSECCO and the visual and aural similarities, the image of PROSECCO will be triggered in the minds of consumers when encountering the NOSECCO label. The opposition was therefore successful under Section 3(4) and the UK designation was refused in its entirety.
This decision underlines the wider protection afforded to PDOs, which can benefit from a lower hurdle of evocation when compared with likelihood of confusion.
Case details at a glance
Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Les Grands Chais De France
Date: 13 November 2019
Link to decision O/691/19
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