UK court rejects attempt to use trade mark appeal as a re-hearing

The High Court said a bid by a wine company to persuade the court to review the findings of fact by the UK Trademark Registry, rather than distinct errors of law or principle, failed because the company had not based its appeal on fundamental errors in the hearing officer's decision making.

Intellectual property expert Iain Connor of Pinsent Masons, the law firm behind Out-Law, said the decision also highlighted the value of a protected designation of origin (PDO), which in many cases may give wider protection than a trade mark.

PDOs are geographical indication protections that place restrictions on the sale or production of certain goods that are synonymous with particular areas of Europe, including Scotch whisky and champagne. EU law protects a PDO against any misuse, imitation or evocation.

“This is much wider than the protection afforded a trade mark owner which, except in limited circumstances, requires evidence of confusion, detriment or unfair advantage,” Connor said.

The wine company, Les Grands Chais de France, applied in January 2018 to protect in the UK an international trade mark registration for ‘Nosecco’ – non-alcoholic sparkling wine produced by French wineries. The application was opposed by the Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco, an Italian association established to protect and promote the use of the name ‘prosecco’ for the Italian sparkling wine which became a PDO in 2009.

The hearing officer of the UK Trademark Registry upheld the Consorzio’s opposition based on the protection which the PDO provided to prosecco.

The officer said the visual and aural similarity between prosecco and Nosecco, and the similar nature of the products, meant that consumers would assume that ‘Nosecco’ was related to ‘prosecco’. As a result, the PDO would be evoked.

Ruling on the appeal, Mr Justice Nugee said he was not persuaded that the hearing officer erred in principle or reached a conclusion that she was not entitled to on the evidence. The judge reiterated that “an appeal is not in the nature of a re-hearing but a review of the decision below”, and the main point to be decided was whether the decision-maker’s factual conclusions were entitled to be reached.

The judge said the hearing officer had not overlooked the difference between the products – namely that Nosecco is non-alcoholic – but was entitled to reach her conclusion on the basis of the similarities between them.

“If this had been a trade mark infringement or passing off case before a UK court, without really strong evidence, it is unlikely that a UK court would have outlawed ‘Nosecco’,” Pinsent Masons’ Connor said.

This article was authored by Sanita Heer, a trainee solicitor in the intellectual property group at Pinsent Masons