UKIPO Says No to NOSECCO
The UK Intellectual Property Office has rejected a trade mark application for a bottle label featuring the word NOSECCO:
The application was filed in 2017 in respect of non-alcoholic wines by Les Grands Chais de France, and has now been successfully opposed by the Italian Trade Consortium responsible for conservation of the Protected Designation of Origin, PROSECCO
Protected Designations of Origin (PDO)
The PROSECCO name is protected as a PDO in the EU specifically for wines, produced from Glera grapes, as grown in a defined area of North East Italy. PROSECCO must also be marketed in glass bottles, which are subject to strict labelling requirements.
The PDO status prevents PROSECCO from being used commercially for comparable, non-compliant products, as well as protecting the name against “misuse, imitation or evocation”.
During the course of the opposition, the Consortium provided evidence from independent press sources and social media sites, showing NOSECCO described as a non-alcoholic PROSECCO. It also submitted evidence that more than 112 million bottles of Prosecco had been sold in the UK in the first seven months of 2017 – around two bottles per capita – in the run up to the filing of the application.
The UKIPO’s hearing officer agreed that PROSECCO clearly enjoys a “vast reputation” in the UK for sparkling wine. She had no hesitation in concluding that use of the word NOSECCO would call PROSECCO to mind, taking advantage of its protected status as a PDO – evoking the PDO in this way would make the applicant’s goods “instantly familiar” to consumers, providing the applicant with a marketing advantage, which it would not otherwise have enjoyed.
As a result, the hearing officer found use of the NOSECCO label could be prohibited in the UK, as the mark unlawfully evoked the PDO and there was also a serious risk the public would be deceived into believing the applicant’s goods were de-alcoholised Prosecco. The application was therefore refused in its entirety.
The Consortium also based its opposition on unregistered rights, arguing that use of the NOSECCO label would amount to passing off.
The substance of this ground was that goodwill subsisted in the name PROSECCO because of the long history of use of the mark for sparkling wines. During the course of the proceedings, the UKIPO partially struck out this ground, as the Consortium is a trade association, which does not itself trade in sparkling wines. As such, it would not be entitled to benefit from the goodwill associated with PROSECCO wine.
The Consortium did not need to pursue its passing off claim to win the opposition. However, the decision is a useful reminder that a trade association may need to be joined by one or more of its members, to have the best chances of success in an opposition based on passing off – otherwise, any goodwill relied on may be restricted to the promotional activities of the trade association and therefore insufficient.
Whilst the decision – which is not yet final – seems sensible and underlines the value of PDOs, the applicant will no doubt be disappointed, since NOSECCO non-alcoholic wines have been sold in major UK supermarkets since launch in 2017. It remains to be seen whether the decision will be used by the Consortium as leverage to request withdrawal of the product from sale, or whether the applicant will file an appeal. The decision follows a number of recent, successful oppositions by the Consortium, including against an application for PAWSECCO for a non-alcohol drink for cats and dogs earlier in the year.
Whilst it may be tempting to evoke the brands of third parties, whilst trying to launch a new product in the marketplace, adopting such a branding strategy can be extremely risky. Use of similar trade marks will infringe registered rights, if there is a risk of consumer confusion. Even where confusion is not likely, registered trade marks with a reputation may be infringed, if the later mark takes unfair advantage of, or is detrimental to, its reputation or distinctive character. Prior to launch of any new brand, proper searches should be conducted, to check for earlier trade mark rights, as well as PDOs. This can help to avoid costly mistakes, requiring rebranding, and the associated reputational damage.