Pawsecco: No more PDO puns

Parties operating in the food and drink sector are likely to be well aware of the Protected Designations of Origin (PDOs), Protected Geographical Indications (PGIs) and Traditional Specialities Guaranteed (TSGs) relevant to their respective fields. Well known examples include CHAMPAGNE wine, GORGONZOLA cheese, and MELTON MOWBRAY pork pies, all of which can only be labelled as such if the products comply with certain requirements. This case ( Woof and Brew Ltd v Consorzio Tutela Prosecco DOC – O-311-18) concerned a UK opposition against the registration of the mark PAWSECCO, an obvious mimic of the well known PDO ‘PROSECCO’, a name that can only be used on wines that are derived from certain vine species from a specified region of Italy, and which meet particular bottling and labelling requirements. The Opponent to these proceedings was the Italian organisation responsible for protecting the PROSECCO PDO; the Applicant was a UK pet drinks company wishing to register the mark PAWSECCO for ‘edible pet treats’, specifically a non-alcoholic ‘wine’ for cats and dogs. The Opponent relied upon six grounds of opposition and, despite the strength of reputation and goodwill in PROSECCO, all failed except one, namely Section 3(4) Trade Marks Act 1994. This ground provides that marks shall not be registered in the UK if registration of the applied for mark would be prohibited by a provision of EU law. In this case, the Opponent cited Articles 102 and 103(2) of Regulation 1308/2013 of the European Parliament and Council, which concerns the market in agricultural products. The Opponent’s arguments in respect of Article 102 failed as this provision prohibits the registration of trade marks which “contain, or consist of a PDO”, which the mark PAWSECCO plainly does not. However, Article 103 protects PDOs and PGIs from any “misuse, imitation or evocation”. Evocation was described by the Court of Justice of the European Union (CJEU) in Gorgonzola (Case C-87/97) as “when the customer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected”. In another recent case (Scotch Whisky Association - C‑44/17), the CJEU has made it clear that 'evocation' might be found even where there is no phonetic and visual similarity between the PDO and the contested mark. In this case, the Hearing Officer found that the Applicant must have recognised the “commercial benefit in choosing (and using) the name” since the Applicant’s own evidence stated that the mark was coined in order to allude to a type of wine. He explained that “the mark, and the pun of which it consists, does not work if Prosecco is not evoked” and concluded on this basis that the applicant was “taking advantage of the strong reputation possessed by the PDO, riding on its coat-tails”. Take home points from this decision:

The power of PDOs, PGIs and TSGs should not be underestimated! Past cases have demonstrated the strength and breath of enforcing these rights, and this case is no different.
Always tell your legal advisors if you know that there is a PDO, PGI or TSG identical or similar to your chosen trade mark.
Adopting a mark which is a play on, or pun of, a PDO will not escape the power of their protection.

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