The demand for low or non-alcoholic drinks has increased in recent years as people have become more conscious of what they consume and the effect it has on their wellbeing. As a result, many producers have introduced alcohol-free versions of their popular drinks to meet this demand.
In 2017, French company Les Grands Chais de France SAS (LGC) launched a non-alcoholic sparkling drink called ‘Nosecco’, seemingly a play on words to take advantage of well-known drink ‘Prosecco’.
‘Prosecco’ is registered as a protected designation of origin (PDO), which means that only products that are produced, processed, and prepared in the Prosecco area can use the word ‘Prosecco’.
In early 2018, LGC requested protection in the UK for an international trade mark registration, claiming a French priority date. The trade mark, a logo incorporating the word ‘Nosecco’, was opposed by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Consorzio), who protect and promote the use of the name ‘Prosecco’.
Consorzio opposed the request on various grounds and the UK Intellectual Property Office (UKIPO) upheld two of them:
- The mark was of such a nature to deceive the public; and
- Use of the mark misused / evoked the PDO for Prosecco.
LGC’s High Court Appeal
LGC appealed the UKIPO’s decision, making various arguments about the name Nosecco, including:
- Nosecco is a novel name which highlights the non-alcoholic nature of the goods.
- The suffix “SECCO” means dry in Italian and by prefixing the ordinary English word NO to produce a newly coined and distinctive made-up word NOSECCO, it is considered clear that the pun or play on words is highlighted to show that the goods are not dry.
- “Nosecco” may be viewed as a parody of “Prosecco”.
- Social media posts referring to Nosecco as “non-alcoholic Prosecco” were a comparison of the two products and recognised the “witty nature” or the “clever concept” of the name NOSECCO.
In June of this year, the High Court dismissed LGC’s appeal. It ruled that the UKIPO was correct to uphold Consorzio’s opposition and conclude LGC’s use of ‘Nosecco’ breached EU Regulations protecting PDOs against “misuse, imitation or evocation”. The Court found that evidence showed the marks would appear similar to the relevant public and that ‘Nosecco’ evokes the PDO.
Why is this important?
The High Court’s decision to dismiss the appeal confirms that cases relating to PDOs must be assessed differently to your typical trademark oppositions, as evocation and likelihood of confusion are not the same. This case also illustrates that clever puns and play on words will not always be enough to avoid trade mark oppositions and that PDOs offer a high level of protection.
This matter could bubble along for some time yet as Nosecco is still available to buy in UK shops. It will therefore be worth keeping an eye out to see if the Consorzio take any further action against LGC in the English Courts.