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Les Grands Chais de France SAS v. Consorzio di Tutela della Denominazione di Origine Controllata Prosecco

[2020] EWHC 1633 (2020)

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Les Grands Chais de France SAS v. Consorzio di Tutela della Denominazione di Origine Controllata Prosecco

England and Wales High Court
[2020] EWHC 1633 (2020)

KL

Facts

Les Grands Chais de France SAS (Grands Chais) (plaintiff) made and sold nonalcoholic sparkling wine under the name Nosecco. Nosecco was made in France, but the bottle displayed Italian phrases. News articles and advertisements online referred to the drink as nonalcoholic Prosecco. Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Consorzio) (defendant) was an association established to protect and promote Prosecco, a trademarked term relating to a specific type of Italian wine that was registered as a protected designation of origin, meaning only wines made in a specific region of Italy and meeting other specified criteria could be sold under the name Prosecco. Grands Chais filed for trademark protection, and Consorzio opposed the application, arguing that the mark Nosecco posed a substantial risk of deceiving the public given its similarity to the Prosecco mark. As evidence, Consorzio presented social-media posts in which consumers referred to Nosecco as a nonalcoholic version of Prosecco, with some also complaining about the taste. A hearing officer ruled for Consorzio, finding that the use of the Nosecco mark was contrary to European Union law and likely to deceive the public. Grands Chais appealed in court.

Rule of Law

Issue

Holding and Reasoning (Nugee, J.)

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