EUROPEAN UNION: General Court Confirms BoA Reading of Evocation Criteria to Justify Invalidity of the Mark PRISECCO

The General Court of the European Union (GC) ruled in Case T-406/24 that the mark PRISECCO cannot be registered as an EU Trade Mark (EUTM) for non-alcoholic cocktails, because it evokes the protected designation of origin (PDO) Prosecco within the meaning of Article 103(2)(b) of Regulation (EU) 1308/2013.

The concept of “evocation” of a PDO refers to situations where a term, image, or presentation indirectly calls to mind a registered PDO—even if the actual name is not used—such that consumers make a mental association with that PDO. 

In 2020, the consortium Consorzio di Tutela della Denominazione di Origine Controllata Prosecco filed an application for a declaration of invalidity with the European Union Intellectual Property Office (EUIPO) against the word EUTM PRISECCO, registered in 2015 for Class 32 by Manufaktur Jörg Geiger GmbH (applicant), on the basis of the PDO Prosecco, which has been protected in the EU for wine since 2009. 

In 2022, the Cancellation Division of the EUIPO declared the contested EUTM invalid, stating that Prosecco has become the most renowned sparkling wine in the EU, alongside Champagne. The applicant unsuccessfully appealed the ruling with the Board of Appeal (BoA) of the EUIPO in 2024 and consequently turned to the GC.

According to the GC, the contested EUTM PRISECCO almost completely embeds the PDO Prosecco (except for the third letter), forming a high degree of visual and phonetic similarity between the two signs, as the BoA correctly noted. In addition, given the fact that the goods at issue are both beverages, have a similar appearance, an equivalent method of consumption in society (as aperitifs or accompanying meals), and a similar way of marketing and distribution, evocation can be established within the meaning of Article 103(2)(b) of Regulation (EU) 1308/2013.  

All of this led the GC to conclude that the BoA was right in its application of the criteria for establishing evocation despite the lack of an identical nature of the goods. As a result, the court dismissed the appeal in its entirety.  

This decision emphasizes the particular importance of and consistency in PDO protection within the EU, not only in economic terms, but also in cultural aspects of intellectual property. The names linked to specific regions and their characteristics (like Prosecco) must remain one-of-a-kind.   

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

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