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Case law: Mere fact that trade mark 'evoked' the Prosecco Protected Designation of Origin was enough to infringe it

Businesses should avoid using trade marks, or applying to register them, if the commercial value of the mark lies in the fact that it evokes a Protected Designation of Origin (PDO), such as that enjoyed by Prosecco, so there is an association of ideas between the mark and the PDO - as that will be enough to infringe the rights in the PDO.

July 2018

This update was published in Legal Alert - July 2018

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A pet food company applied to register 'Pawsecco' as a UK trade mark for certain pets' treats. The body managing Prosecco's 'Protected Designation of Origin' (PDO) and its EU collective trade mark 'Prosecco PDO' (containing an image made up of a number of wine glasses forming a circle) objected to the application on grounds it infringed both.

The objection based on the collective trade mark failed comprehensively. The UK Intellectual Property Office ruled that it would be obvious to anyone that Pawsecco was not, and did not contain, Prosecco and was neither licensed nor authorised for sale by Prosecco, but was a gimmicky, novelty product for pets. Therefore, there would be no confusion, misrepresentation or deception. Nor would it dilute or tarnish the collective trade mark as it was a logo rather than a word mark, and different from the Pawsecco mark; nor had it been used sufficiently to develop a reputation in the market.

However, the claim in relation to the PDO succeeded simply because of the fact that the Pawsecco mark would evoke the Prosecco PDO in consumers' minds. Indeed, that was what underpinned the commercial value of the name 'Pawsecco' to the pet company - it would not generate sales for them if Prosecco was not evoked. Even though consumers would know that Pawsecco was not actually associated with Prosecco, the association of ideas meant that the pet company was taking undue advantage of the PDO.

The same reasoning may well apply to Protected Designations of Origin (PGIs), such as that which protects Scotch whisky.

Operative date

  • Now

Recommendation

  • Businesses should avoid using trade marks, or applying to register them, if the commercial value of the mark is that it evokes a PDO, so there is an association of ideas between the mark and the PDO. This will be enough to infringe the rights in the PDO

Case ref: Trade mark application 3215159 in the name of Woof and Brew for the trade mark Pawsecco and opposition thereto (under 409494) by Consorzio di Tutela Della Dominazione Di Origine Controllata Prosecco

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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