The names and trade marks of certain well-known regional food and drink products are tightly protected under European law. The extent of that protection was analysed in a High Court case concerning a non-alcoholic sparkling wine bearing the name ‘Nosecco’.
The French producers of Nosecco applied for trade mark protection in respect of a bottle label bearing that name. The application was, however, successfully opposed by a trade association which guards the interests of Prosecco makers. The name of the enormously popular Italian wine is a protected designation of origin (PDO) under Regulation (EU) No 1308/2013.
A hearing officer acting on behalf of the Registrar of Trade Marks found that there was a serious risk of average consumers being deceived by use of the Nosecco name. She also ruled that the proposed trade mark evoked the PDO within the meaning of Article 103(2)(b) of the Regulation.
In challenging those conclusions, the producers of Nosecco pointed out that the name is prefixed by the ordinary English word ‘no’, and that the word ‘secco’ means ‘dry’ in Italian. It was, they argued, a witty and clever made-up name which conveyed to consumers that the drink is not alcoholic, not dry and not Prosecco.
Dismissing the appeal, the Court noted evidence in the form of social media posts and media articles indicating that consumers tended to describe Nosecco as ‘non-alcoholic Prosecco’. The visual and aural similarity between the two words was such that the name Nosecco was likely to trigger an image of Prosecco in consumers’ minds.
Although consumers would be aware that products labelled ‘Nosecco’ are not in fact Prosecco, the hearing officer was entitled to find that the former evoked the latter. In riding on the coat-tails of Prosecco, Nosecco took advantage of the Italian wine’s vast reputation in the UK and it could not be suggested that that advantage was fair.
The Court also detected no error of law in the hearing officer’s conclusion that use of the name Nosecco created a serious risk that consumers would be deceived, within the meaning of Section 3(3)(b) of the Trade Marks Act 1994. The risk was that purchasers of Nosecco would consider that it was de-alcoholised Prosecco which was in some way compliant with the requirements of the PDO.