14 Jul It’s a no for Nosecco
The UK is a major market for Prosecco, drinking over 97 million litres per year. With the sparkling wine being so recognisable in the UK, the fact that the trade mark application for “Nosecco” has been refused will perhaps come as little surprise to British consumers.
In this article, Serjeants’ expert team of trade mark attorneys provides an overview of the recent decision, explaining why the protected designation of origin for Prosecco has been a major problem in GCF’s registration of the Nosecco trade mark.
On 10 January 2018, a French company named Les Grands Chais de France SAS (GCF) applied to register a figurative trade mark largely consisting of the name “Nosecco” in the UK for non-alcoholic wines and non-alcoholic sparkling wines.
However, this application was opposed by the organisation responsible for managing the protected designation of origin (PDO) for Prosecco. A PDO covers products that are “produced, processed and prepared” in a specific area, using a particular method.
Amongst other things, the PDO for Prosecco requires that:
- 85% of its contents must be derived from the Glera grape
- the grapes must be grown within a specific area in north-east Italy
- its alcohol level must be 9% or higher.
The Nosecco product does not meet any of these requirements.
The UKIPO’s decision
On 13 November 2019, the UKIPO issued a decision refusing GCF’s application. This was on the basis that a registration of Nosecco would be contrary to EU law, as the product carries an “evocation” with Prosecco. The trade mark would likely deceive the public; the UKIPO argued that a consumer buying the product could assume that it was, in some way, linked with authentic Prosecco.
With the brand name successfully registered as a trade mark in several other countries, GCF decided to appeal this decision to the High Court.
In the initial opposition, GCF had argued that the consumer would not readily link the name Nosecco with Prosecco. It stated that consumers would understand the name to mean “not dry” as they would know “secco” means “dry” in Italian. There was no admission that Nosecco might possibly be perceived to be a non-alcoholic Prosecco.
In its appeal, GCF contended that the UKIPO could not decide that Nosecco evokes the PDO Prosecco without sufficient evidence from actual consumers.
The final verdict
As the initial decision had more than enough evidence to show the clear and obvious link between the two, GCF’s argument failed. The Court reiterated that what matters is not the intention of the creator of the sign, but the public perception, and therefore the refusal of the trade mark application was upheld.
Importantly, this decision only relates to the outcome of the trade mark application. While Nosecco has been denied registration as a trade mark in the UK, the actual Nosecco product remains on sale in UK stores. As far as we are aware, there has not yet been any trade mark infringement action against GCF for the sale of Nosecco in the UK.
Protected designation of origin: the purpose of a PDO
Some might argue that many of the names protected by PDOs, such as Prosecco, have become commonplace in trade and should not be protected. However, the PDO’s are often in place for a number of important reasons. This includes: safeguarding the reputation of regional food and drink, promoting rural and agricultural activity, helping producers obtain premium prices for genuine products, and of course, protecting consumers from being misled by non-genuine products.