Nugee J, in Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco [2020] EWHC 1633 (Ch), dismissed an appeal against the decision of IPO Hearing Officer Judi Pike.
The earlier decision found for the opposition against a request from the Applicant French company for protection in the UK, for the international figurative trade mark registration incorporating the text "NOSECCO" on the basis of the evocation of the protected designation of origin (PDO) for Prosecco. The High Court upheld the Hearing Officer’s original decision, stating that:
- The PDO would be evoked within the meaning of EU Law.
- There was a sufficiently serious risk that consumers would be deceived.
- The Hearing Officer had not erred in principle or reached a conclusion they were not entitled to reach, on the evidence presented.
The case concerned a non-alcoholic wine marketed by the Appellant, Les Grands Chais de France SAS under the name “NOSECCO”. The Appellant’s alcohol-free beverage hit the shelves of the UK in June 2017. Having a French priority date of 22 November 2017, the Appellant requested protection in the UK for “NOSECCO” on 10 January 2018, and the mark was subsequently published for opposition in the Trade Marks Journal on 8 June 2018.
Prosecco has (since July 2009) gained recognition as a Denominazione di Origine Controllata, as granted by Italian Ministerial Decree and (since 1 August 2009) been registered as a PDO, pursuant to Regulation 1308/2013. Spearheaded by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the “Consorzio”) the then Respondent opposed the application for protection under various grounds of the Trade Marks Act 1994 and relevant EU regulation.
BACKGROUND
In the initial UKIPO decision, the Hearing Officer:
- Struck out the claim brought by the Respondent under section 5(4)(a) TMA 1994, following Consorzio’s failure to demonstrate a sufficient level of standing for a pleading of passing off (being a trade organisation).
- Rejected the Respondent’s argument for bringing a claim under section 3(6) TMA 1994; that the Applicant filed the mark in bad faith. Explaining that section 3(6) would only be engaged where a mark was opportunistically filed, the Hearing Officer made clear this was not the case on the facts presented.
- Found for the Respondent on the claims brought under sections 3(4) and 3(3)(b) TMA 1994, namely that use of the mark was contrary to EU law (Articles 102 and 103(2) of Regulation 1308/2013) and that the mark was of such a nature as to deceive the public.
The Hearing Officer compared the two marks and it was established that, as one is clearly presenting itself as a non-alcoholic beverage, it would necessarily mean that the products were not identical but could still be found similar. They were both competing products; their purpose being that they were both beverages consumed socially. They then went on to inspect the trade mark, which was noted as giving the appearance of a typical wine label, along with the Italian wording surrounding the main visual component of NOSECCO. They then went on to compare the two marks against each other, noting the similarity in length, visual appearance, and the fact that both words were aurally similar.
As a result of the above, the Consorzio succeeded in its opposition.
THE FACTS AND ARGUMENTS
The Hearing Officer’s decision was subsequently appealed to the High Court before Mr Justice Nugee.
Nugee J distilled the Appellant’s core of the Grounds of Appeal down to the fact that although the Hearing Officer referred to various legal tests and authorities, that they did not apply them properly to the facts of the case, and that their findings of fact were not properly supported by a fair assessment of the evidence (the Appellant accusing the Hearing Officer of filling gaps in the evidence of the Consorzio, “…by embarking on a frolic of her own or substituting her own views in an impermissible way.” (at paragraph 41) Much attack was also placed on the Hearing Officer’s lack of weight in their decision to the choice of name coming from the evidence given by the Applicant surrounding the coining of the term.
The Respondent’s Notice submitted offered alternative grounds to uphold the Hearing Officer’s decision under s 3(4) TMA 1994, namely under Article 103(2)(a) of Regulation 1308/2013 (attempting to re-introduce a line of argument earlier rejected by the Hearing Officer).
JUDGMENT
Nugee J explored 3 key questions in his judgment, namely:
- Did the Hearing Officer err in upholding the s. 3(4) ground on the basis of Art 103(2)(b)?
- Did she err in upholding the s. 3(3)(b) ground?
- If so, should the Decision be upheld on the basis of Art 103?
Nugee J held that the Hearing Officer had been entitled to find that the PDO would be evoked within the meaning of Article 103(2)(b) of Regulation 1308/2013 and therefore the opposition under section 3(4) succeeded. The Judge found that the Hearing Officer was entitled to form a view as to how the name would be perceived by consumers. This completely independent of the authenticity of the origin of the name itself.
Further, that they were entitled to find that there was a sufficiently serious risk that the consumer would be deceived and therefore the opposition under section 3(3)(b) also succeeded. Here, Nugee J held that consumers who think that the Appellant's goods are alcohol-free Prosecco will believe that the goods have some connection with Prosecco, will in some way be deceived as to the nature of the goods, as it does not have any connection at all.
Nugee J rejected the Appellant's argument that social media and press article evidence about Nosecco, demonstrating a link was made to Prosecco, was unhelpful. The Judge felt that it reflected the genuine, unprompted perception of ordinary consumers, despite this being second-hand evidence.
Nugee J dispatched with the need to consider in any detail the Respondent’s Notice, given his findings against the arguments proffered by the Appellant. He did, however, agree with the original assessment that this argument would have quite simply failed, given the requirement of actual use of "that protected name", and Nosecco is not "that protected name" i.e. Prosecco.
IMPLICATIONS
This case is consistent with previous caselaw in the area of PDOs and demonstrates that a PDO can be a useful right to assert. Moreover, it demonstrates the protection the Courts are willing to give to holders of PDOs.
Given the steadily growing popularity of ‘nolo’ (no and low alcohol) drinks, with SIBA (The Society of Independent Brewers) predicting it to be one of the fastest growing markets in 2020, it is important for drinks businesses to be wary about their marketing and branding strategy, in bringing their products to market, especially where they are likely to be competing with goods with protected geographical indicators (PGI) status.
The High Court also makes some interesting findings about the scope of trade marks more generally. Nugee J’s favourable treatment (at paragraphs 48 – 54) of the various social media posts exhibited by Consorzio shows that the Court is willing to evaluate “second-hand” evidence of consumers’ mindset, as it went directly to the heart of the Respondent’s argument that the name Nosecco evoked in consumers’ minds being, the protected trade mark of Prosecco. This being the case, businesses should be careful to ensure that their trade marks are sufficiently different from existing trade marks (including PDOs) and therefore do not mislead the general public into believing that their trade marked products are linked to those existing brands or PDOs.
