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Trade Mark Catastrophe leaves Pawsecco in the doghouse


Dr Stephen James writes again for Ward Trade Marks. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.
This time he reviews a UK IPO trade mark opposition case where an application for a playful word mark covering dog treats was alleged to ‘evoke’ the well known PDO Prosecco. As we shall see, only one member of the pack can be the top dog.

Background

The British company Woof and Brew sells food and drink products for pets. One of those products is Pawsecco, an alcohol and grape-free still “wine” for cats and dogs. According to Woof and Brew, Pawsecco can be served as a drink or poured over food “as your pet prefers”. Until recently, the Pawsecco marketing material stated that

“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”.

This message was certainly noticed by the purchasing public, some of whom commented as follows on the Internet:

“Amazing. Cat Prosecco aka Pawsecco”

“Apparently there is now Prosecco for cats called Pawsecco”

“I have bought Princey some treats and a bottle of rose, doggy Prosecco, or Pawsecco if you will”.

The application for Pawsecco

In February 2017, Woof and Brew sought to protect their trade mark by filing a UK (trade mark) application for Pawsecco covering “edible pet treats” in class 31.

The application was opposed (O-311-18) by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, (Consorzio), the organisation responsible for the protection and promotion of the EU Protected Designation of Origin (PDO) Prosecco, the well-known and, in the UK at least, highly successful sparkling wine.

The grounds for the opposition

The Consorzio’s opposition relied upon a wide range of grounds. However, it eventually focused on section 3(4) of the UK Trade Marks Act 1994. This section prevents the registration of (later) marks, the use of which would be prohibited by any enactment or rule of law, or any provision of Community (Ed note: EU) law. The laws that were said by Consorzio to prohibit the use (and thereby the registration) of Pawsecco were Articles 102 and 103(2) of Council Regulation No. 1308/2013. This Regulation sets out the system for the control of twenty-four specified agricultural sector products, including wine. In particular, it regulates the protection and enforcement of Protected Designations of Origin (PDO), such as Cava, Champagne and Prosecco, and Protected Geographical Indications (PGI), such as Arbroath Smokies, Melton Mowbray pork pies and Whitstable Oysters. (Both PDO and PGI fall under the broader term “geographical indication”).

Article 102 of the Regulation allows a PDO owner to prevent the registration of a later trade mark, if the (later) trade mark “contains consists of a protected designation of origin or a geographical indication which does not comply with the product specification concerned…”.

The Hearing Officer’s reasoning

The Hearing Officer (Mr Morris) dismissed this part of the Section 3(4) opposition for two reasons. First, the mark applied for was Pawsecco not Prosecco (or a combination mark containing Prosecco). It was therefore clear that the later mark did not “contain or consist of a protected designation of origin”. Second, the Consorzio’s PDO had the following product specification, namely “a grape vine product, particularly wines, grape must and wine vinegar”. The Hearing Officer concluded that none of these wine-based products could ever be classed as an “edible pet treat” in class 31, even if such a pet treat were a liquid product. Mr Morris therefore rejected the Consorzio’s opposition based on Section 3(4) and Article 102.

The Hearing Officer then moved on to the ground of opposition in which Consorzio relied on Section 3(4) of the 1994 Trade Marks Act and Article 103(2) of Council Regulation No. 1308/2013. The relevant parts of Article 103(2) read as follows:

2. A protected designation of origin and a protected geographical indication, as well as the wine using that protected name in conformity with the product specifications, shall be protected 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 Hearing Officer dismissed the Consorzio’s opposition based on Article 103(2)(a) on a similar basis to that upon which he had refused their Section 3(4) / Article 102 ground of opposition. According to Mr Morris, the applicant did not intend to use the term Prosecco and their “edible pet treats” in class 31 were not “comparable”to the Consorzio’s wines (protected under the PDO).

That left Article 103(2)(b) of the Regulation and, in particular, whether the use of the trade mark Pawsecco would be a “misuse, imitation or evocation” of the PDO.

What is actually sold under Pawsecco?

The Hearing Officer began by considering the actual product that was, at present, being sold under the trademark Pawsecco. This was a “faux” wine that was marketed principally as a complement to food to create an edible dish. Given this background, Mr Morris concluded that the Pawsecco product that was being sold by Woof and Brew was an“edible pet treat” in class 31.

To evoke or not to evoke, that is the question

The Hearing Officer then reviewed a number of earlier European Court cases dealing with the “evocation” of a PDO,see Cambozola/Gorgonzola (C-87/97) and Port Charlotte/Port (C-56/16). He concluded from this review that “…evocation is not dependent on a likelihood of confusion or an assumption by the relevant public that the goods sold under the Pawsecco mark is, or contains, actual Prosecco, or is in some way a licensed form of use.”

Having reached that conclusion, the Hearing Officer then ruled as follows on the section 3(4)/Article 103(2)(b) ground of opposition:

The applicant’s witness stated that the mark was coined in order to allude to a type of wine. Indeed, the nature of 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. Thus, for the type of product shown in the evidence, there is clear evocation of the PDO. For completeness, I should also add that I agree with Ms Clark’s further submission that even if the goods did not cover the type of product shown in the evidence,and it instead only covered more traditional treats for pets, evocation is still likely. It would be counter-intuitive to believe that the applicant, who has coined the mark for the purpose of evoking the PDO, would not use it in a manner which achieves that evocation.

Coat-tail riding

It seems to me an 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 a marketing gimmick. The marketing gimmick is the combination of a faux wine product for pets coupled with the use of a name which evokes a popular (the evidence shows it is very popular and is currently very much in vogue) type of wine. The applicant is therefore taking advantage of the strong reputation possessed by the PDO, riding on its coat-tails. To tolerate such use would not promote fair competition. I conclude that the type of evocation that the applied for mark creates is enforceable under Article 103(2)(b). The ground of opposition succeeds.

The Hearing Officer therefore rejected Woof and Brew’s application under section 3(4) of the 1994 Trade Marks Act.

Practitioner Comment

The applicant in the above case (Woof and Brew) were dogged by a catalogue of incriminating marketing materials for Pawsecco. No one had to ferret around in a rabbit hole to find it, Woof and Brew provided it in their own evidence.

Pawsecco was hardly a guinea pig in relation to the authorities’ views on trade marks that are a play on a geographical indication or intend to “evoke” that indication. See, for example,the Cambozola/Gorgonzola (C-87/97) case mentioned above, as well as European Court cases involving Verlados and Calvados (C-75/15), Parmesan and Parmigiano Reggiano (C-132/05) and Glen Buchenbach (German) whisky and Scotch Whisky(C-47/17).

The lesson from these earlier cases is that geographical indications are powerful rights and should be treated with respect. So, if you are choosing a trade mark in the area of food and drink, don’t just go on a fishing expedition or get on a hamster wheel, see your trade mark advisor to discuss your choice of mark and be sure to let that advisor know if your mark includes a geographical indication, or is intended to evoke such a geographical indication. That way, you should avoid ending up as sick as the Pawsecco parrot.

Dr Stephen James
Ward Trade Marks

Ward Trade Marks conducts trade mark opposition proceedings before the UKIPO and the EUIPO. If you need more information on opposing a trade mark application or defending an opposition please contact Rachael or Bill Ward: [email protected], or call us on 01284 774841

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December 17, 2018 Bill