Dog days for Pawsecco
Its wordplay didn’t work out, explains Azhar Sadique. O/311/18, Pawsecco (Opposition), UK IPO, 21st May 2018.
O/311/18, Pawsecco (Opposition), UK IPO, 21st May 2018
- Where a mark incorporates a PDO, or a variation or play on words based on a PDO, it is sufficient for such a mark to simply trigger the thought of that product in the mind of the consumer to fall foul of s3(4)
This case considered the evocation of Protected Designations of Origin (PDOs) in the matter of PAWSECCO in the name of Woof and Brew Ltd, and opposition thereto by Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco, the governing body responsible for ensuring the term “Prosecco” is used only on wines from a specified region of Italy. The Applicant was using the mark on a sparkling wine-style bottle containing a liquid treat for pets. The application covered “edible pet treats”.
The grounds of opposition were based on six sections of the Trade Marks Act 1994 and included supporting evidence demonstrating the well-known status and reputation of the term Prosecco.
However, the only successful ground of opposition was s3(4). This ground provides that the registration of a trade mark would be preventable by a provision of EU law. The laws said to prohibit the use/registration of a mark here were Articles 102 and 103(2) of Regulation (EU) 1308/2013, which govern the use of PDOs for wine, and the relationship between those products and trade marks.
The Hearing Officer (HO) dismissed the submission under Article 102 on the basis that the mark PAWSECCO did not contain, or consist of, the PDO Prosecco directly.
On applying Article 103, the HO considered whether PAWSECCO could constitute a form of misuse, imitation or evocation of the PDO Prosecco.
The case of Gorgonzola (C-87/97) was cited in defining evocation as covering a situation where the term used to designate a product incorporates part of a PDO, so that, when the consumer is confronted with the name of the product, the image triggered in their mind is that of the product whose designation is protected.
In this case, the Applicant’s own witness statement confirmed that the mark was coined in order to allude to a “type of wine” product.
On this basis, the HO came to the inevitable conclusion that the Applicant must have seen some form of commercial benefit in choosing the term PAWSECCO and that the marketing gimmick of combining a faux wine product with the use of a name that evokes a popular and currently in-vogue type of wine would clearly take advantage of strong reputation possessed by the PDO Prosecco. Thus, evocation was very clear and the use and/or registration of the mark fell foul of Article 103.
This case stands as yet further confirmation that PDOs, Protected Geographical Indications and Traditional Speciality Guaranteed designations possess powerful enforcement rights that need to be taken seriously.
In addition, it is worth keeping up to date with the “Cornish pasties”, “Jersey Royals” and “Buxton Blues” of the PDO world in order to ensure that clients are aware of the potential pitfalls of using marks that may take the form of a play on words, pun, or other variation of protected designations or indications.
Azhar Sadique is a Chartered Trade Mark Attorney and a Director at Keltie LLP