James is a Partner and Head of the Dispute Resolution team and primarily handles commercial…View Profile View all
Schofield Sweeney’s litigation team has recently been asked to advise a confectionery supplier about the use of the word “Prosecco” on the labels of confectionery products sold through leading retailers.
Since 2009 Prosecco has been a protected region of origin. At that time, the producers based in north east Italy of sparkling white wine based on the Prosecco grape realised that a grape variety could not be geographically delineated and protected, so they registered the word “Prosecco” as a region of origin or DOC. The name of the grape was also changed to glera. The protection afforded to the producers means anyone who grows the grape variety formerly known as Prosecco outside the designated area cannot use the word Prosecco on the label if the product is to be sold in the EU.
Article 103 of Regulation 32013R1308 provides that, “A protected designation of origin and a protected geographical indication may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification.” It goes on to say, “A protected designation of origin and protected geographical designation, as well as the wine using that protected name in conformity with the production specifications, shall be protected against (a) any direct or indirect commercial use of that protected name (1) by comparable products not complying with the product specification of the protected name; or (2) insofar as such use exploits the reputation of a designation of origin or a geographical indication.”
That means it is a breach of the Article of the relevant Regulation to employ the word “Prosecco” in a direct commercial use which exploits the reputation of that designation of origin or geographical indication and that applies not only to the use on the product but on the outer packaging, advertising material and documents relating to the product concerned, unless the product is or contains Prosecco which has been produced in the protected area.
In the UK the Wine Regulations 2011 provide that a breach of the relevant EU Article is a criminal offence for which a fine can be imposed in either the Magistrates’ Court or the Crown Court depending upon the seriousness of the offence.