## Facts

- Les Grands Chais de France SAS (Grands Chais) made and sold a non‑alcoholic sparkling wine under the name “Nosecco.”
- Nosecco was made in France, but its presentation included Italian wording/phrases on the bottle.
- Grands Chais sought UK protection for an International Registration designating the UK for a NOSECCO label mark in Class 32 for “non‑alcoholic wines; non‑alcoholic sparkling wines.”
- The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Consorzio) is an association that defends the registered protected designation of origin (PDO) “Prosecco,” which may be used only for wines made in a defined Italian region and meeting product specifications.
- The Consorzio opposed the UK designation, relying (among other grounds) on:
  - Trade Marks Act 1994 (TMA) s. 3(4) (registration barred where use is prohibited by EU law), invoking Article 103 of Regulation (EU) No 1308/2013 (PDO protection); and
  - TMA s. 3(3)(b) (marks of such a nature as to deceive the public).
- Evidence before the UKIPO included online news items, advertisements, and social‑media posts in which consumers and writers referred to Nosecco as “non‑alcoholic Prosecco” or a non‑alcoholic version of Prosecco, with some consumers also complaining about the taste.
- A UKIPO Hearing Officer upheld the opposition on s. 3(4) and s. 3(3)(b), finding (i) the NOSECCO mark was contrary to EU PDO rules and (ii) it carried a substantial risk of deceiving the public. The Hearing Officer rejected other pleaded grounds (including bad faith and passing off).
- Grands Chais appealed to the High Court (Chancery Division). The appeal was from the Registrar’s decision and was not a full rehearing.

## Issues

1. Whether the UKIPO Hearing Officer erred in concluding that use of “NOSECCO” for non‑alcoholic sparkling wine would breach EU PDO protection (Regulation 1308/2013, Article 103), so that registration was barred under TMA s. 3(4).
2. Whether the Hearing Officer erred in concluding that “NOSECCO” was of such a nature as to deceive the public under TMA s. 3(3)(b), including deception as to origin or a commercial connection with PROSECCO.
3. Whether the Hearing Officer’s evaluative findings and reasoning were outside the range open to her on the evidence, such that the High Court should intervene on appeal.

## Decision

- The High Court dismissed the appeal and left in place the refusal of UK protection for the NOSECCO label mark.
- The court held that the Hearing Officer was entitled to find that “NOSECCO” amounted to an “evocation” of the PDO “Prosecco” within Article 103(2) of Regulation 1308/2013, so use would be contrary to EU law and registration was barred by TMA s. 3(4).
- The court also held that the Hearing Officer was entitled to find that use of the mark was likely to deceive the public within TMA s. 3(3)(b), given the closeness of the sign to “PROSECCO,” the product context (sparkling wine‑type drinks), and how the mark was being understood in real‑world references.
- The court declined to interfere with the Hearing Officer’s assessment of the evidence; it found no material legal misdirection and no conclusion that was not reasonably open on the record.

## Legal Principles

- An appeal from a UKIPO opposition decision is typically by way of review: the court will not re-try the case and will interfere only for an error of law or principle, failure to give sufficient reasons, or an evaluative conclusion that was not reasonably open to the tribunal.
- Under Regulation 1308/2013, Article 103(2), PDO protection extends beyond exact reproduction of the protected name and can be infringed by “evocation,” assessed by asking whether the average consumer is brought to think of the protected product when encountering the challenged sign used for the relevant goods.
- “Evocation” does not require proof of confusion in the trade mark sense; the focus is the mental association created by the sign in context, including the similarity of the words and the closeness of the goods.
- Evidence of how consumers and the media actually refer to the product (for example, calling it “non‑alcoholic Prosecco”) can support findings both of evocation under Article 103 and of deception under TMA s. 3(3)(b).
- Under TMA s. 3(3)(b), the question is whether use of the mark is likely to mislead a significant part of the relevant public (for example, into thinking the goods have the geographical origin or PDO-linked qualities of PROSECCO, or some trade connection with it).

## Conclusion

The High Court upheld the UKIPO’s refusal of NOSECCO for non‑alcoholic sparkling wine, holding that the Hearing Officer was entitled to find the sign would evoke the PROSECCO PDO contrary to EU law (triggering TMA s. 3(4)) and was likely to mislead consumers (TMA s. 3(3)(b)), particularly given the product context and evidence that the public and press described Nosecco as a non‑alcoholic version of Prosecco.


Les Grands Chais de France SAS v. Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, [2020] EWHC 1633 (2020)