Pets will no longer be able to indulge in a drink product which calls to mind the popular human treat Prosecco as a result of an unsuccessful trade mark application this week. (See the UK Intellectual Property Office decision of Monday, May 21 decision here.)
The decision is of considerable interest and not just for pet lovers who like to spoil their furry friends! Decisions on protected designations of origin (PDOs) and their precise relationship with registered trade marks are relatively rare. This decision demonstrates that PDOs can offer stronger protection on particular facts than trade marks and passing off. It also serves as a warning to businesses which plan to market products or services using a play on words or on the image of a well-known mark or PDO.
Just because there is no misrepresentation or confusion caused will not necessarily be a get out of jail free card…..
Woof and Brew limited, a pets drinks company, failed earlier this week in its attempt to register ‘Pawsecco’ as a UK trade mark for its edible pet treats. Perhaps unsurprisingly, the organisation which looks after Prosecco’s protected designation of origin (PDO) (the Italian Consorzio di Tutela della Denominazione di Origine Controllata Prosecco) (‘the Consortio’) challenged the application relying on both the Prosecco PDO and the EU collective Trade Mark, consisting of ‘Prosecco PDO’ in a circle around the silhouette of glasses (EUTM number 11,619,764).
The PDO relates to wines deriving from a particular vine species, within specific grape-growing areas in Italy. For a wine to qualify to be called Prosecco there are also specific bottling and labelling requirements. The first Prosecco wine was recorded in 1381 and UK imports have dramatically increased between 2010 and 2014 and in 2015 the UK was the largest export market for this product. Sales of Prosecco overtook those of Champagne in the year July 2014 to July 2015 for the first time when £339m in sales was made. In the circumstances, not surprisingly, Woof and Brew did not disagree that the mark Prosecco had a reputation and goodwill.
The Consortio claimed that the Pawsecco application should not be registered based on no less than 6 separate sections of the UK Trade Marks Act 1994. These included that there was likelihood of confusion with the EU trade mark, and/or that Pawsecco would bring that mark to mind such that it would dilute and tarnish its EUTM and provide Woof and Brew with an unfair advantage. It was also claimed that it was filed in bad faith for “opportunistic reasons” with the knowledge that consumers would associate it with the PDO and its reputation and/or that it was a misuse, imitation or evocation of the PDO under section 3(4) of the Act (as contrary to Article 103/2 of the EU Regulation which governs the use of PDOs for wine, as well as how these relate to trade marks).
No less than 5 of the 6 grounds failed as the public would not associate the product sold under Pawsecco with the real thing and would see it purely ‘as an apparent marketing gimmick to sell a novelty product for pets’. They would not assume it was actually Prosecco, contained any of it or had been licensed or authorised by parties legitimately connected with the Prosecco mark. In essence there was no confusion or misrepresentation or deception. It would not dilute or tarnish the EUTM as the EUTM was a figurative (‘Prosecco PDO’ in a circle around the silhouette of glasses) as opposed to a word mark and had not been used to such an extent that it, as opposed to the PDO, would have a reputation. Also, the EUTM was different to the PDO, and was also more different to the mark Pawsecco.
So if that was the case why did the UKIPO refuse the application and on what grounds?
This was because the UKIPO considered that use of the application mark Pawsecco would amount to evocation of the PDO where the product did not comply with its specification. It would make the consumer think of the image of Prosecco as the protected product and even if there was no confusion as to origin this was enough. What mattered was that there was an association of ideas regarding the origin of the products such that undue advantage was taken of the reputation of the PDO.
Evidence cited of consumer reaction, such as comments on social media like ‘Amazing. Cat Prosecco AKA Pawsecco’ and ‘I have bought princey some treats and a bottle of rose doggy Prosecco, or Pawsecco if you will’ only served to make the point! The applicant’s own marketing material “Good friends bring happiness, but best friends bring Prosecco and now man’s best friend can join in too. Woof and Brew’s ‘Pawsecco’ a still ‘wine’ for cats and dogs” did not help it either. Indeed its evidence was that the mark was coined in order to allude to a type of wine. The UKIPO decision stated that “the mark and pun of which it consists, does not work if Prosecco is not evoked’ and ‘the inevitable conclusion that the applicant must have seen some form of commercial benefit in choosing (and using) the name it did. It is essentially a pun, creating something of marketing gimmick…..the combination of a faux wine product for pets coupled with the use of a name which evokes a popular (the evidence shows that it is very popular and is currently very much in vogue) type of wine.”
This was taking advantage of that strong reputation and riding on the PDO’s coattails and to ‘tolerate such use would not promote fair competition.’
Woof and Brew said the product “contains no alcohol and is not a wine as such”, but rather was a “health treat for cats and dogs”. However the UKIPO noted that “it is highly unlikely that pet owners would assume that the product was actually wine” but that the evocation was enough.
Thus the UKIPO upheld the Consortio’s opposition and ordered Woof and Brew to pay £2,200 ($2,955) towards costs incurred.
PDOS as well as Protected Designations of Origin (PGIs) can be very valuable tools to protect producers of relevant traditional products with heritage. The recent CJEU Opinion in the case of the Scotch Whisky Association against Michael Klotz of 22 February 2018 illustrates the potential width of protection. This CJEU preliminary ruling came out of a case before the Regional court in Hamburg where the dispute involved the use of ‘Glen Buchenbach’ for German made whisky and the PGI ‘Scotch Whisky’.
Although that case was in the context of specific PGIs for spirit drinks and a different Regulation No.110/2008 the wording of the provision being considered as regards ‘any misuse, imitation or evocation’ was the same. There the CJEU made it clear that the ‘evocation’ provision might even apply where there is no phonetic and visual similarity between the PDO and the accused mark. In that case if the disputed mark was liable to evoke in the relevant public an association of ideas with the PGI or with the geographical area related to it and there was conceptual proximity between the PGI and the accused mark such that the consumer would think of the product subject to the PGI, this would be enough to invoke the protection. It remains to be seen as to whether the Regional court in Hamburg will decide that ‘Glen Buchenbach’ does in fact evoke the PGI ‘Scotch Whisky’ despite the fact that the 2 terms are quite different but given the CJEU Opinion it is now a serious possibility.
Woof and Brew may well be ‘pawsing’ for thought before deciding on whether to appeal this decision but if they choose not to do so they will have to go back to the drawing board and look to come up with something ‘pawsitively’ unique for their marketing strategy for their pet treat product ….