“Nosecco” lost its sparkle: logo trade mark application rejected by UK IPO and decision upheld by High Court

In Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco [2020] EWHC 1633 (Ch), the High Court dismissed an appeal against a decision of the UK IPO, upholding an opposition to the request for protection in the UK of the international logo trade mark registration incorporating the word "Nosecco" for non-alcoholic wines and non-alcoholic sparkling wines, on the basis of the protected designation of origin (“PDO”) for Prosecco.

The opposition by Consorzio was based on two grounds, and the UKIPO Hearing officer upheld both of them:

• the mark was of such a nature as to deceive the public (Section 3(3)(b) of the Trade Marks Act 1994); and
• use of the mark was prohibited by EU law because it misused/evoked the PDO for Prosecco within the meaning of Article 103(2)(b) of the Regulation (EU) No 1308/2013, relating to agricultural products (Section 3(4) of the Trade Marks Act 1994).

The High Court (Mr Justice Nugee) held that the UKIPO Hearing Officer was correct in her findings.

Les Grands Chais De France argued that the public often refers to the mark Nosecco as "alcohol-free prosecco" or "non-alcoholic prosecco", demonstrating this with examples from social media and press articles (including posts about Nosecco from Instagram, Twitter and Facebook), and therefore understood the products to be distinct. The High Court rejected this line of argument, considering it did not show anything other than an unprompted perception of consumers and without context. The High Court considered that the evidence showed that marks would appear automatically similar to the relevant public, supporting the Hearing Officer’s conclusion that the mark “Nosecco” evoked the PDO.

Les Grands Chais De France also referred to two recent EUIPO opposition division decisions: Bolgheri and Consejo Regulador del Vi de la Terra Mallorca v Rotkäppchen-Mumm Sektkellereien GmbH. In each case an opposition based on contravention of Art 103(2)(b) had failed. In Consejo, the case failed because the EUIPO considered that the public would not consider a non-alcoholic wine (sold under the name Sol de Mallorca) to have a connection with the protected geographical indication Mallorca. Les Grands Chais De France told the High Court that both cases “evidently turn on their own facts”. Given this, the High Court held that these previous cases did not compromise the Hearing Officer’s methodology to the different facts in the present case.

It appears from this case that Les Grands Chais De France attempted every possible argument to convince the High Court that the Hearing Officer has erred in her decision. However, in the absence of any error, the High Court was reluctant to interfere with the decision of the Hearing Officer.

Interestingly, Nosecco is still available for sale in the UK. It would be interesting if Consorzio were to bring an infringement or passing off claim in the UK, as the protection of PROSECCO as a geographical indication in the UK post-Brexit still remains subject to negotiation; this is a hot topic in the current UK-EU Brexit negotiations.