Les Grands Chais De France SAS v Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco

On an appeal from a trade mark opposition decision, an appellate court reviews the decision rather than conducting a rehearing. It should show restraint towards primary factual findings and evaluative assessments, intervening only for a material error of principle or a conclusion the decision-maker was not entitled to reach.

For evocation of a protected designation of origin, the question is whether the disputed sign triggers in the consumer’s mind the image of the protected product. Likelihood of confusion is unnecessary. The court may assess the presumed reaction of consumers from the sign, the goods and surrounding evidence, without requiring direct consumer evidence.

A sufficiently serious risk of deception under the Trade Marks Act 1994 may arise where consumers believe that goods have a connection with, or are derived from, a protected product.

Les Grands Chais de France SAS appealed against the decision of the UK Trade Mark Registry Opposition Division, Decision No O/691/19, which upheld an opposition to protection in the United Kingdom of the international mark NOSECCO for non-alcoholic wines and non-alcoholic sparkling wines.

The opposition succeeded under sections 3(4) and 3(3)(b) of the Trade Marks Act 1994. The Hearing Officer found that NOSECCO evoked the protected designation of origin Prosecco under Article 103(2)(b) of Regulation 1308/2013 and created a sufficiently serious risk of consumer deception. The central issues were whether those findings involved an appealable error and whether the opposition could alternatively be upheld under Article 103(2)(a).

1. Appeal dismissed. The appeal was a review of the Hearing Officer’s decision, not a rehearing. The appellate court should not interfere with primary facts or multifactorial evaluations absent a distinct and material error of principle, or a conclusion the decision-maker was not entitled to reach.
2. The Hearing Officer gave adequate reasons. A decision-maker need not recite every item of evidence or set out every stage of reasoning. The reasons must explain the basis on which the decision was reached. The decision adequately explained that NOSECCO evoked Prosecco because the image of Prosecco would be triggered in the average consumer’s mind.
3. Under Article 103(2)(b) of Regulation 1308/2013, evocation occurs where the disputed designation triggers in the consumer’s mind the image of the protected product. Likelihood of confusion is unnecessary. The presumed reaction of consumers may be assessed by the court or Hearing Officer using the sign, the goods, the evidence and specialised experience. Direct evidence from consumers is not required.
4. The Hearing Officer was entitled to find the goods highly similar to Prosecco. They were wines, competed with alcoholic drinks, were sold near alcoholic wines and were intended to be consumed in a similar social manner. The non-alcoholic character made the goods non-identical but did not make them dissimilar.
5. The visual and aural similarity between NOSECCO and PROSECCO, the nature and presentation of the goods, the Italian wording and the evidence of consumers describing Nosecco as non-alcoholic Prosecco supported the finding of evocation. The sign could evoke Prosecco even if consumers understood that the goods were not actually Prosecco.
6. The Hearing Officer’s reference to a marketing advantage was not necessary to the Article 103(2)(b) conclusion. In any event, the advantage was properly understood as taking advantage of Prosecco’s reputation by riding on its coat-tails.
7. The finding under section 3(3)(b) was also open to the Hearing Officer. There was a sufficiently serious risk that consumers would believe that the goods had some connection with, or were derived from, Prosecco, despite there being no such connection.
8. The costs order was within the Hearing Officer’s discretion. The Respondent’s Notice based on Article 103(2)(a) did not require determination; the judge indicated that the alternative argument would fail because NOSECCO was not the protected name Prosecco.

• High Court (Chancery Division): Appeal from the UK Trade Mark Registry Opposition Decision No O/691/19 dated 13 November 2019. The appeal was dismissed.