A CLEAR NO TO NOSECCO! THE HIGH COURT OF JUSTICE OF ENGLAND AND WALES REJECTS THE APPEAL IN A NEW CHAPTER IN THE BUBBLE WAR. THE PROTECTED DESIGNATION OF ORIGIN “PROSECCO” IS AN OBSTACLE TO THE REGISTRATION OF THE TRADEMARK “NOSECCO”.
By decision of 24 June, the High Court of Justice of England and Wales confirmed the previous rejection of the application for the trademark Nosecco of the Intellectual Property Office of the United Kingdom, considering the interference with the protected designation of origin “Prosecco”, under EU Regulation No 1308/2013, and also considering the risk that the sign could mislead the English public.
The contested trademark application
The well-known French company Les Grand Chais de France, producer of a non-alcoholic sparkling wine, had filed an application in January 2018 for the following international trademark for non-alcoholic wines:
The opposition procedure
The Italian Consortium for the Protection of the Controlled Designation of Origin Prosecco has successfully filed an opposition against the above trademark application before the Intellectual Property Office of the United Kingdom: the office pointed out that EU Regulation no. 1308/2013 shields protected designations of origin explicitly from “any misuse, imitation or evocation” and this also when the actual origin of the product is indicated (as happened in this case). The UK office also stressed that the term “evocation” does not require any risk of confusion: for having an evocation it would be sufficient to have a link to the protected term designation of origin to convey a new message to the consumer. Moreover, the trademark would be deceptive for the consumer who could well expect that the product thus indicated would, in some way, result from the elaboration of an authentic Prosecco.
The decision was appealed by the French company. The combination of the initial negation ‘No’ with the adjective ‘secco’ (= “dry” in Italian language) would have the meaning of a witty indication for a beverage which is not dry and therefore sweet. The starting point of the argument was that knowledge of the Italian term ‘secco’ could be taken for granted, even by an English-speaking public. If anything, the imaginative creation “No secco” would be considered as a legitimate parody of the term Prosecco. The play on words could therefore also be interpreted as a “no” to “prosecco”, an interpretation that would distance the consumer from the protected term. To describe this argument the appellant had used the suggestive term “teach away”, and thus the expression known in the patent field to highlight the irreconcilable conceptual distance and different direction between two ideas. The mentioning that there would be “many reasons why people choose non-alcoholic beverages, including reasons of religion, health, low calorie requirements, legitimate participation in motorized traffic”, the French appellant had also implicitly suggested the possible relevance of fundamental rights to the present case. Moreover, according to the appellant, the decision of rejection was unjustifiably based on a “presumed consumer perception” since it was not considered necessary to have concrete evidence of the latter.
The decision of the High Court of Justice of England and Wales
The High Court of Justice of England and Wales rejected the appeal, confirming the previous decision: what matters is not the intention of the creator of the sign but, as correctly observed by the Office, the alleged public perception. The first association of the public, in the case of the sign “Nosecco”, would be the well-known “Prosecco”, while the possible second thought would derive from the denial, namely that it is not a Prosecco and that it is not a dry-tasting drink. There would therefore be no room for the application of a “teach away” doctrine in the field of distinctive signs. It was also reaffirmed that the application of the criterion of “presumed consumer perception”, even without resorting to ex officio technical advice, must be considered to be confirmed by settled case-law of the Court of Justice of the European Union.
From a systematic – conceptual point of view, the decision of the High Court of Justice of England and Wales is not surprising: the text of EU Regulation 1308/2013, which expressly prohibits any “evocation”, has often been applied with severity even in the previous case law of the Court of Justice concerning the conflicts between the signs Cognac / Konjakkia; Gorgonzola / Cambozola or Calvados / Verlados. The application of the criterion of “presumed public perception”, to be determined directly by the Judge, can also be based on established case law. Nevertheless, in order to correctly determine the perception of the public, it will be necessary to observe very carefully changing customs. The present dispute can be framed in a broader context in which it can often be observed how the use of signs for non-traditional food and drink clashes with historical-traditional signs. The ever-increasing demand for new types of food, capable of satisfying increasingly different and diversified demands, sometimes supported by aspects such as religion and health, and on the other hand the possibility of enjoying food from increasingly diverse origins, will inevitably change the type of perception that the consumer will have in relation to the signs used in these areas.