Fiona Clark appeared for the Respondent (“the Consorzio”) on this appeal against a hearing officer’s refusal to register the sign NOSECCO in respect of non-alcoholic sparkling wine and also at the hearing below. The Consorzio, an association established, inter alia, to protect the well known PROSECCO designation of origin (“the PDO”), had opposed the registration. The hearing officer had found that the sign applied for would “evoke” PROSECCO contrary to art. 103(2)(b) of Regulation (EU) 1308/2013 and was also liable to deceive the public, e.g., into believing that non-alcoholic sparkling wine bearing the sign applied for was de-alcoholised PROSECCO or otherwise derived from PROSECCO. The hearing officer accordingly held that the registration applied for would be contrary to both s. 3(4) and 3(3)(b) of the Trade Marks Act 1994. NOSECCO was in fact in use in relation to non-alcoholic wines which had no connection whatsoever with PROSECCO and were made in France and the hearing officer had before her evidence including social media posts showing the reaction of members of the public to those wines and the use of the name NOSECCO in relation to them. The applicant appealed to the High Court
On appeal, Nugee J. considered the relevant case law of the Court of Justice (including C-44/17 “Scotch Whisky”) and held that the hearing officer had given adequate explanation of her reasoning, had not erred in law or principle or reached a conclusion that she was not entitled to on the evidence. As such, she had been entitled to find that the PDO would be evoked within the meaning of art. 103(2)(b). Further, there was a sufficiently serious risk that the some consumers would believe NOSECCO non-alcoholic sparkling wine to have some connection with Prosecco, even if they did not know quite what, and so be deceived. The hearing officer’s decision was therefore upheld, and the appeal was dismissed.