In a recent decision by the UK Intellectual Property Office, a provider of pet drinks had their application for a trade mark refused.
Woof and Brew’s release of PAWSECCO in early 2017 caught the attention of many pet-owners and drinks-lovers, including Consorzio di Tutela della Denominazione di Origine Controlla Prosecco (‘Consorzio’).
Consorzio is the organisation responsible for the protection and promotion of the Protected Designation of Origin (PDO) for Prosecco, an increasingly popular sparkling wine. The PDO ensures that only products using a particular type of grape from a specified region in Italy may use the name Prosecco.
The application for the registration of trade mark PAWSECCO was consequently objected to by Consorzio, who opposed the application with reference to six sections of the Trade Mark Act 1994. Five of the six objections fell flat, with only the use of Section 3(4) proving to be fruitful for Consorzio. This section provides for the refusal of a trade mark if its use in the UK would be preventable by EU Law. Article 103(b) of Regulation 1308/2013 of the European Parliament and Council (relating to the regulation of agricultural products generally) was relied on by Consorzio who aimed to demonstrate that Pawsecco was “evocative” of Prosecco PDO.
Whilst it was considered highly unlikely that Pawsecco and Prosecco would be confused, this in itself was insufficient to prevent a finding of evocation. Case law from the CJEU was cited by Consorzio to further this point (Gorgonzola (Case C-87/97)).
Paragraph 97 of the recital to Regulation 1308/2013 states that “registered designations of origin…should be protected against uses which take advantage of the reputation enjoyed by complying products”. Mr Morris, the Senior Hearing Officer in this application, agreed with Consorzio that the PAWSECCO mark relies on the evocation of Prosecco, finding that the whole marketing strategy was actually based on their consumers making such link. This ‘marketing gimmick’ was considered to be taking advantage of the PDO’s reputation, and therefore unacceptable in the name of fair competition.