The registration of Pawsecco as a trade mark has been rejected on appeal on the grounds that it imitates, misuses or evokes Prosecco, the Italian wine, which itself has designation of origin (PDO) protection.

BACKGROUND

Woof and Brew Limited, a pet treat company, applied for and subsequently failed in their bid to register ‘Pawsecco’ as a UK trade mark for its edible pet treats (Class 31). The name is an obvious play on the renowned PDO ‘Prosecco’. The product itself is described as a grape-free, alcohol-free, still “wine” for cats and dogs.

Woof and Brew’s trade mark application was successfully challenged in 2018 by the Italian Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, which is the organisation concerned with Prosecco’s protected PDO.

Although a PDO is not a trade mark, it is similar in that it offers to the public a guarantee of the origin of the goods to which it is applied. A PDO certifies that the product originates from one clearly defined geographical region.

The dispute was then appealed and the initial decision in 2018 was upheld.

OBJECTIONS

The Consorzio claimed that the Pawsecco mark infringed both Prosecco’s PDO and the EU collective trade mark for ‘Prosecco PDO’, which depicts the words ‘Prosecco DOC Prosecco PDO’ around a circle of wine glasses (EUTM number 11,619,764):

EUTM 011619764

The Consorzio based its objection on a number of grounds. In relation to their EU mark, it claimed there was a likelihood of confusion of the applied for mark with its Prosecco mark, that the applied for mark would bring the earlier mark to mind resulting in dilution, tarnishing, and/or an unfair advantage for the applicant.

They also relied on arguments that the applied for mark would be liable to deceive the public into thinking that the goods are PDO-compliant, and also claimed that the Pawsecco mark was filed in bad faith “for ‘opportunistic reasons’, in the knowledge that consumers would associate it with the PDO and its reputation.”

THE IPO’s 2018 DECISION- CONSORZIO’S REJECTED ARGUMENTS

The UK Intellectual Property Office rejected almost all of the Consorzio’s arguments in their 2018 decision.

It held that it would be obvious to consumers that Pawsecco was not and did not contain Prosecco, and it would be clear that it was neither authorised nor licensed by Prosecco; Pawsecco was merely a gimmicky pet product so there would be no confusion, misrepresentation or deception.

The IPO also held the mark would not dilute or tarnish the Consorzio’s collective trade mark as it was different to the Pawsecco mark and a logo rather than a word mark, and use of the Pawsecco mark had not been sufficient to develop a reputation in the market.

The Consorzio focused particularly on section 3(4) of the UK Trade Marks Act 1994, which bars the registration of a mark if its use would be prohibited by any enactment or rule of law, including EU law. The law in question – Council Regulation No. 1308/2013 – outlines the regulation of specific agricultural products (including wine).

Article 102 of Council Regulation No. 1308/2013 enables an owner of a PDO to prevent the registration of a later trade mark if it “contains or consists of a protected designation of origin or a geographical indication which does not comply with the product specification concerned”.

The Consorzio’s argument based on Section 3(4) and Article 102 was rejected: The IPO ruled that application was for the mark Pawsecco, rather than Prosecco or even a mark containing Prosecco. It was clear that the applied for mark did not “contain or consist of a protected designation of origin“.

Additionally, the PDO product specification was explicitly “a grape vine product, particularly wines, grape must and wine vinegar” and the IPO ruled such wine-based products could not be classed as an “edible pet treat” in class 31.

THE IPO’s 2018 DECISION- CONSORZIO’S SUCCESSFUL ARGUMENTS

The Consorzio’s next (and successful) ground of opposition was based on Section 3(4) TMA and Article 103(2) of the Council Regulation. Article 103(2) offers protection to PDOs against:

“(a) any direct or indirect commercial use of that protected name: (i) by comparable products not complying with product specification of the protected name; or (ii) in so far as such use exploits the reputation of a designation of origin or a geographical indication;

(b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”,“imitation”, “flavour”, “like”, or similar…”

The IPO held that Woof and Brew had no intention of using the name “Prosecco” and that their pet treats were not comparable to the Consorzio’s PDO-protected wines. However, it ruled that under Article 103(2)(b) of the Regulation, the use of Pawsecco would class as a “misuse, imitation or evocation” of the PDO (see [18] of the decision).

The Hearing Officer determined that “the whole marketing strategy appears predicated upon an assumption that the potential consumer will see the evocation. The mark, and the pun of which it consists, does not work if Prosecco is not evoked” [22] and that, on the evidence in the case, it did not matter that the mark was for pet treats.

It was found that Woof and Brew was taking unfair advantage of the strong reputation possessed by the Prosecco PDO, essentially riding on its coat-tails. The IPO held that allowing such use would be obstructive to fair competition. Woof and Brew’s application for Pawsecco was rejected under section 3(4) of the 1994 Trade Marks Act.

2019 APPEAL

The judgement given in the 2019 appeal tribunal upheld the Hearing Officer’s decision in 2018 and the Judge’s reasoning has further clarified several points.

The Hearing Officer’s decision in the 2018 Pawsecco case was grounded, at least in part, in the established principle of taking into account the “surrounding circumstances” when assessing evocation of a PDO. This established principle was seen in Case C-87/97 Consorzio per la tutela del formaggio Gorgonzola and was reaffirmed in 2016 in Case C-75/15 Viiniverla Oy v. Sociaali-ja terveysalan lupa-ja valvontavirasto.

A potential concern to the IPO in the 2019 Appeal was the CJEU’s Judgment in Case C-44/17 Scotch Whisky Association v. Michael Klotz, which was delivered after the 2018 Pawsecco decision. The Scotch Whiskey Association case could have been considered to abandon the established “surrounding circumstances” approach that influenced the 2018 decision. The Court in this case ruled that “for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned” [60] and that “for the purpose of establishing that there is a ‘false or misleading indication’, […] account is not to be taken of the context in which the disputed element is used” [61].

The Appeal Tribunal considered whether it was in fact right of the Hearing Officer in the 2018 case to reject the Pawsecco application on the basis of the Consorzio’s objection under Section 3(4) TMA / Article 103(2)(b). The Appeal Judge concluded that the Scotch Whisky Association case “does not purport to overrule and cannot reasonably be taken to exclude the established principle”, and confirmed that evocation can indeed be assessed by taking into account the surrounding circumstances.

Parody

The 2019 Appeal Tribunal also considered parody as a potential limitation or exception to the protection of trade mark rights and PDOs.

The Judge took into account Article 11 of the EU Charter of Fundamental Rights and Freedoms, which protects the right to freedom of expression (including commercial expression), and Article 5(3)(k) of the InfoSoc Directive (2001/29/EC), which states that “use for the purpose of caricature, parody or pastiche” may be permitted as a limitation in relation to rights of the kind protected under Articles 2 and 3 of the Directive.

The Appeal Court referred to Case C-201/13 Deckmyn, where the CJEU held that the essential characteristics of a parody are “first, to evoke an existing work, while being noticeably different from it, and secondly, to constitute an expression of humour or mockery”[33]. The CJEU ruled in Deckmyn that the acceptability of a parody depends on whether, in the circumstances of the case, there is a fair balance between the protection of rights of those referred to in Articles 2 and 3 of the InfoSoc Directive (authors of works, broadcasters, performers etc) and the freedom of expression of the maker of the parody permitted under Article 5(3)(k).

The Appeal Court also considered the EU Trade Mark Regulation (Regulation (EU) 2017/1001) and the Recast Trade Marks Directive (Directive (EU) 2015/2424), the preambles of which state that “Use of a trade mark by third parties for the purpose of artistic expression should be considered fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this [Regulation/Directive] should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.”

 Although these examples of legislative and precedential principles would appear encouraging for the likes of Woof and Brew, the Appeal Judge noted that, as far as he was aware, no case law has yet dealt with the application of such principles to certain scenarios in a way that could allow parody to justify evocation of a PDO. He also noted that he “would expect the availability of any such justification to be quite closely circumscribed by the need to ensure that PDOs receive protection in relation to use in commerce which is commensurate with that which the legislature has plainly intended them to receive” [24].

The Appeal Judge concluded that ultimately, although he did not rule out the possibility of a parody exception, he agreed with the Hearing Officer’s decision in the 2018 case.

MOVING FORWARD

This verdict reinforces the fact that geographical indications, including PDOs, are powerful rights. In certain cases they have the potential to offer stronger protection than trade marks.

The take-home message is that using or applying to register a trade mark is best avoided if the mark’s commercial value is based on its evocation of a PDO. The association of ideas between the PDO and the mark is sufficient to encroach on the rights in the PDO.

Businesses that are considering marketing their goods or services with a clever pun that riffs on a well-known mark or PDO should take note of this cautionary (pawtionary) tale.