In a recent UK Trade Mark Office decision, it was held that a trade mark application for a logo containing the words NOSECCO (essentially for non-alcoholic Prosecco) was contrary to section 3(4) of the UK Trade Marks Act 1994, more specifically Article 103(2)(b) of EU Regulation 1308/2013, which safeguards a Protected Designation of Origin (PDO) against any "misuse, imitation or evocation".
In order to be able to use the PROSECCO name, as a PDO producers must be able to show they have complied with various restrictive specifications (for example: the grapes must be grown within nine specified areas in Northeast Italy). The Consortium for the Protection of the Controlled Denomination of Origin Prosecco was able to convince the UK Trade Mark Office that the NOSECCO trade mark would cut across the PDO and the mark, if registered, would potentially deceive the public (as to the nature, quality or geographical origin of the goods).
The trade mark applicant (Les Grands Chais De France) appealed this decision to the High Court using various arguments such as that the word SECCO (in Italian) means "dry" and so consumers would thus understand that the product NOSECCO to have a non-dry taste. Overall the appeal failed with Justice Nugee holding that it was likely that NOSECCO would create a link with PROSECCO in the minds of consumers and this is all that was required, i.e., confusion/deception was not necessary.
Checks of the Trade Marks Register have identified new trade mark applications from May 2020 for the word NOSECCO by a different party - Treasury Wine Estates UK Brands Limited based in Australia. Only time will tell whether this party will in time suffer the same fate as as that of Les Grands Chais De France.
What odds of an infringement-type misuse or passing off claim in the UK, when protection of "Prosecco" as a form of geographical indication in the UK after Brexit (technically) remains subject to negotiation? Would be a corker...