The price of Banksy’s anonymity
What is the background to Banksy’s copyright dispute with fashion brand, Guess?
A UK pet drinks company who manufacture a non-alcoholic ‘wine’ for cats and dogs has had their trade mark application for “PAWSECCO” refused by the UKIPO.
Woof and Brew (“the applicant”) applied to register “PAWSECCO” in 2017 as a UK trade mark in class 31 covering “edible pet treats”. The mark was opposed by Consorzio di Tutela della Denominazione di Orine Controllata Prosecco (“the opponent”), the Italian organisation responsible for safeguarding Prosecco’s protected designation of origin (PDO).
PDO status gives regional and traditional products, such as Champagne, Jersey Royal potatoes and Parma ham, legal protection against imitation. To qualify as Prosecco and use the name, wines must therefore meet certain criteria, such as the area and vine species they derive from, as well as particular bottling and labelling requirements.
The opponent presented six different objections to the registration of the mark. Their objections included that there was a likelihood of confusion with their EU collective mark for Prosecco; and that PAWSECCO would bring their mark to mind with the result of diluting or tarnishing their mark as well as giving the applicant an unfair advantage. They claimed that PAWSECCO could deceive the public into thinking the goods are compliant or licenced by the PDO; and that the mark was filed in bad faith, for “opportunistic reasons”, in the knowledge that consumers would associate it with the PDO and its reputation. They also contended that the applied for mark was a ‘misuse, imitation or evocation’ of the PDO, based on articles 102 and 103(2) of Regulation 1308/2013 of the European Parliament and Council, which govern the use of PDOs for wine and the relationship between them and trade marks.
The opponent succeeded based on their final grounds of opposition that the use of the mark PAWSECCO was an ‘evocation’ of the PDO. Evocation was described by the Court of Justice of the European Union (CJEU) in Gorgonzola (Case C-87/97) as ‘when the customer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’. This applies even when there is no likelihood of confusion between the products concerned.
Evocation was concluded to exist in this case based on the applicant’s evidence which stated that the mark was coined in order to allude to a type of wine. The examiner goes on to explain that ‘the mark, and the pun of which is consists, does not work if Prosecco is not evoked’.
In deciding whether the applied for mark should be regarded as fair competition, and therefore allowed despite the evocation, it was found that the applicant must have recognised the ‘commercial benefit in choosing (and using) the name it did’ and concluded that the applicant was ‘taking advantage of the strong reputation possessed by the PDO, riding on its coat-tails’.
The majority of the opponent’s arguments, however, were dismissed. The examiner found that the public would recognise that PAWSECCO is a ‘marketing gimmick’ and understand that it is not actually Prosecco, contains Prosecco or is licenced by any party connected with the Prosecco industry.
This is not the first time that the opponent has opposed another SECCO mark and succeeded on similar grounds. Last year the IPO refused registration of OLDFIELDS APPLESECCO for “cider”. In 2015, registration of CLOUD 9 CAVIAR AND CHAMPAGNE COLLECTION in respect of “flooring, floor coverings” and the like was refused on the same grounds, although the goods were far removed from Champagne sparkling wine.
The moral to be drawn from these decisions is to avoid selecting a trade mark which features, or is so similar to, a well-known PDO that ‘evocation’ of the PDO is very likely or inevitable.
If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.