Condivisibile la decisione di Trib. UE 24.09.2025, T-406/24, Manufaktur Jörg Geiger GmbH, v. EUIPO, Consorzio di Tutela della Denominazione di Origine Controllata ‘Prosecco’ (interv.). che conferma la decisione amministrativa del BoA:
<<In assessing the risk of evocation, account must be taken of all the relevant factors surrounding the use of the sign against which a protected designation of origin is invoked (see, by analogy, judgment of 4 October 2024, Consortium des Charcutiers Corses, C‑579/23 P, EU:C:2024:832, paragraph 80 and the case-law cited).
43 It follows from the foregoing that, in order to establish evocation within the meaning of Article 103(2)(b) of Regulation No 1308/2013, the Board of Appeal was entitled to find, in paragraph 73 of the contested decision, that the decisive criterion was whether, when the consumer was confronted with the contested mark PriSecco, the image triggered directly in his or her mind was that of the goods covered by the PDO Prosecco.
44 In that regard, the Board of Appeal observed that, visually, the word signs at issue both consisted of eight letters and that seven of those letters were identical, moreover in the same order. It found that those signs were fairly long and that, therefore, the only different letter, the third, would probably go unnoticed. It concluded that they were visually highly similar. Following similar reasoning to that carried out for the purposes of the visual comparison, it found that the signs at issue were phonetically highly similar. In addition, it found that, at least from the point of view of a non-negligible part of the relevant public in the European Union, there was no conceptual difference between the signs at issue. The Board of Appeal thus concluded that the signs at issue were overall similar to a high degree.
45 It should be noted that the contested sign PriSecco contains, in the same order, the same letters as the name protected by the PDO Prosecco, with the exception of the third letter, which is an ‘i’ instead of an ‘o’. It follows that the PDO Prosecco is almost completely embedded in the contested sign. That incorporation forms part of the high degree of visual and phonetic similarity between the signs at issue, correctly found by the Board of Appeal.
46 The Board of Appeal was also correct to reject the comparison of the signs at issue proposed by the applicant, according to which the component ‘secco’ could be perceived differently in the contested sign, on account of the capital letter ‘S’, and is purely descriptive as regards the Italian designation for drinks with a low sugar content, with the result that there is a clear difference between the prefixes ‘pri’ and ‘pro’. It should be noted that, according to settled case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see, to that effect, judgment of 31 January 2018, Weber-Stephen Products v EUIPO (iGrill), T‑35/17, not published, EU:T:2018:46, paragraph 29 and the case-law cited). Therefore, the fact that the letter ‘s’ of the contested sign is written in upper case cannot be taken into consideration, which makes it unlikely that the element ‘secco’ will be perceived separately.
47 In addition, the Board of Appeal found that there was a notable proximity between the wines covered by the PDO Prosecco and the non-alcoholic cocktails covered by the contested mark, on account of their consumption and marketing patterns. As regards the way in which the goods at issue are consumed, it noted that those two categories of beverages were both commonly consumed in society, in particular as aperitifs or accompanying dishes served during meals. It pointed out that non-alcoholic beverages were increasingly consumed in an equivalent manner to alcoholic beverages. As regards the way in which the goods at issue were marketed and distributed, the Board of Appeal stated that they were displayed side by side in the food sections of supermarkets and in bars and cafés.
48 In that regard, even assuming that the goods at issue are not similar, as the applicant submits, it must be pointed out that it is possible to find an ‘evocation’ within the meaning of Article 103(2)(b) of Regulation No 1308/2013 even where there is no similarity between the goods concerned (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 61). In the circumstances of the present case, given the fact that the goods at issue are beverages, with the result that they may have a similar appearance, the partial incorporation of the PDO Prosecco in the contested mark and their high degree of visual and phonetic similarity are sufficient, in accordance with the case-law cited in paragraphs 38 to 42 above, to justify a finding of evocation>>.
V. nel ns cod propr. ind. l’art. 14 c.1 lett. c bis)