The General Court of the European Union recently ruled on 24 September 2025 (case T-406/24), establishing the prohibition of “evocation” of a protected designation of origin (PDO) even when the contested sign refers to products that are formally different, if there is a strong visual and phonetic similarity and a commercial proximity such as to induce the average European consumer to make a direct association with the protected PDO.
The invalidity proceeding for undue evocation
In 2015, a German company operating in the food & beverage sector successfully registered the European Union trademark “PriSecco” for products included in class 32, namely “non-alcoholic cocktails”.
However, in September 2020, the Consortium for the protection of the controlled designation of origin “Prosecco” filed an application with the EUIPO for a declaration of invalidity of the “PriSecco” trademark for undue evocation, considering that, due to the similarity between the terms “PriSecco” and “Prosecco”, the reputation of the PDO, and the affinity between the products “non-alcoholic cocktails” and “wine”, the consumer could be misled, associating the two signs.
The German company, in its defense, argued that the products in question cannot be considered similar: on one hand a sparkling wine, on the other a non-alcoholic beverage, moreover belonging to two distinct classes according to the Nice Classification (class 33 and class 32, respectively). Furthermore, it invoked the application of Article 61 EUTMR, concerning acquiescence, arguing that the Consortium had been aware of the trademark for years without ever taking action to protect the PDO.
The EUIPO Cancellation Division, having examined the case, upheld the application and declared the “PriSecco” trademark invalid.
It held, in fact, that the institute of acquiescence could not be applied to bodies holding PDOs or PGIs. Furthermore, it established that the terms “PriSecco” and “Prosecco” have both visual and phonetic similarities, such as to generate a possible association by the average European consumer.
The appeal and confirmation of the Cancellation Division’s decision
In August 2022, the German company, owner of the annulled trademark, lodged an appeal.
The EU General Court confirmed the EUIPO’s decision, also finding a strong visual and phonetic similarity between the two conflicting signs. In particular, it noted that the term “Prosecco” is almost entirely contained within the sign “PriSecco”, making the evocation sufficient.
With regard to the alleged dissimilarity of the products, it was established that evocation may exist even in the absence of identity or product similarity. Although the two beverages formally belong to distinct classes, it is necessary to consider the proximity between the methods of consumption and marketing, since both wines and cocktails (even non-alcoholic) are consumed in similar social settings, such as during an aperitif, and distributed through the same channels, such as bars, cafés, or supermarkets.
The General Court of the European Union therefore dismissed the appeal and confirmed the invalidity decision issued by the EUIPO, stating that the protection of PDOs also extends to products belonging to formally different product classes, where there is a concrete commercial and consumption proximity.