I. Background of the case.
In 2015, the German company Manufaktur Jörg Geiger GmbH obtained registration of the word mark “PriSecco” for “cocktails, non-alcoholic” in class 32.
In 2020, the Consorzio di Tutela della Denominazione di Origine Controllata “Prosecco” requested the invalidity of this trademark, in particular citing a evocation of the PDO “Prosecco” according to article 103, par. 2, letter b) of Regulation (EU) No. 1308/2013 on the common market organization for agricultural products (known as the Wine Regulation).
Following a first-instance annulment decision, the Board of Appeal upheld the trademark’s invalidity despite a partial waiver by the proprietor limiting the products to “non-alcoholic cocktails whose ingredients are apple and/or pear juice made from meadow fruit varieties“.
II. The main contribution of the decision.
The department reminds that the concept of evocation as referred to in the wine regulations, article 103, subsection 2, letter b), must be interpreted broadly.
In particular, it confirms that:
- The evocation can exist even in the absence of any risk of confusion
- The products do not have to be identical or similar
- The owner of the disputed trademark’s intention is not necessary, as the evocation is assessed objectively.
This approach is in line with the jurisprudence of the European Court of Justice, in particular the “Champanillo” judgment (C-783/19), which extended the protection of PDOs to catering.
The department reminds that evocation is assessed in the light of the average European consumer, normally informed and reasonably attentive.
It must be characterized by “a sufficiently direct and unambiguous connectionbetween the contested sign and the relevant PDO.
In this case, the department finds:
- A very strong visual and phonetic similarity between “PriSecco” and “Prosecco”
- The absence of relevant conceptual difference
- A remarkable proximity between wines and non-alcoholic cocktails, especially in terms of consumption and distribution context.
The department concludes that there is
“a strong risk that, for a significant part of European consumers, when confronted with the “PriSecco” sign for the non-alcoholic cocktails in question, the image that comes directly to their mind is the image of the product protected by the PDO ” Prosecco“.
III. Scope of the decision.
This decision is part of a jurisprudence that strengthens the protection of wine PDOs at European level.
Indeed, the protection offered to these AOPs is particularly extensive compared to traditional brands.
This decision recalls the crucial importance for companies to take into account the protection of wine AOPs in their overall intellectual property strategy, even when they operate in sectors that are a priori distant from the products that benefit from these designations.
