Victory for Prosecco PDO in ‘Pawsecco’ TM opposition
A provider of pet drinks has failed in its attempt to register ‘Pawsecco’ as a trademark in the UK, following opposition proceedings instigated by the organization responsible for protecting Prosecco’s protected designation of origin (PDO). Woof and Brew, which describes itself as a “pet drinks company”, applied to register ‘Pawsecco’ as a trademark for goods in class 31, covering edible pet treats, in February 2017.
‘Pawsecco’ was opposed by an Italian organization responsible for the protection and promotion of Prosecco’s PDO. The PDO relates to wines deriving from a particular vine species, within specific grape-growing areas in Italy. For a wine to qualify as Prosecco there are also unique bottling and labeling requirements.
Consorzio (the Italian company) said the applied-for mark would be confused with its earlier registered EU trademark (EUTM), which features the words ‘Prosecco PDO’ in a circle around the silhouette of glasses (EUTM number 11,619,764).
The Italian organization claimed that the applied-for mark would dilute and tarnish its EUTM and provide Woof and Brew with an unfair advantage.
Between July 2014 and July 2015 Prosecco sales reached £339 million ($445.1 million) in the UK, Consorzio said, and Woof and Brew’s mark was filed in bad faith for “opportunistic reasons” with the knowledge that consumers would associate it with the PDO and its reputation.
Woof and Brew said the product “contains no alcohol and is not a wine as such”, but rather a “health treat for cats and dogs”. It also claimed the Prosecco name is used “by a wide variety of manufacturers to identify an aspect of the product they make”, such as cosmetics and clothing.
The IPO confirmed that trademark applications which contain or consist of a PDO, but do not comply with the product specification, will be refused under EU law, noting that ‘Pawsecco’ does not contain or consist of the PDO Prosecco.
PDOs are protected against any direct or indirect commercial use of the protected name, and Woof and Brew’s marketing material makes use of the link between its Pawsecco product and Prosecco, the IPO explained.
It agreed with Consorzio’s assertion that the ‘Pawsecco’ mark was “coined in order to allude to a type of wine”, though the IPO noted that “it is highly unlikely that pet owners would assume that the product was actually wine”.
Overall, “the nature of the whole marketing strategy appears predicated upon an assumption that the potential consumer will see the evocation,” the IPO said, adding it is an “inevitable conclusion” that Woof and Brew saw “some form of commercial benefit in choosing (and using) the name that it did”
Woof and Brew is therefore “taking advantage of the strong reputation possessed by the PDO, riding on its coat-tails”, and to “tolerate such use would not promote fair competition”, the IPO concluded. A spokesperson for Woof and Brew said the company is “disappointed and somewhat perplexed” by the decision, but confirmed that it is still very much “business as usual” for organization.
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