When Prosecco goes flat: Court refuses to strike out PDO claim

PDO and certification mark claims can survive early strike-out or summary judgment where there is credible evidence of UK-targeted use and potential harm to the protected name.

Background

“Prosecco” is a protected designation of origin (PDO), reserved for wines produced in defined areas of north-eastern Italy. The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Consorzio) has brought proceedings against a London-based drinks company and its directors for alleged misuse of the term in relation to sparkling wines marketed in the UK.

On 15 April 2026, HHJ Hacon considered the defendants’ application to strike out the claim or obtain summary judgment.

The claimant safeguards and promotes PDO Prosecco and owns the UK certification mark for PROSECCO. The first defendant, Prosecco International (D1), is a UK-based company. The second and third defendants, Michael Goldstein and Ralph Goldstein (D2 and D3), are directors alleged to have exercised significant control over D1’s conduct.

The application

The Court applied the familiar strike-out and summary judgment principles from Easyair Ltd v Opal Telecom Ltd: the claimant needed to show a realistic, not fanciful, prospect of success. The Court also had to avoid conducting a “mini-trial” while considering the evidence likely to be available at trial.

The claim alleges infringement of the certification mark, breach of Article 103 of EU Regulation No. 1308/2013, and breach of sections 10(2) and 10(3) of the Trade Marks Act 1994. It focuses on use of the sign PROSECCO on two UK-targeted websites (www.prosecco.com and www.proseccodoc.com) in connection with products, services, investment opportunities and “Asolo Prosecco” alleged to fall outside, or be unconnected with, PDO Prosecco.

The defendants made three main points in support of their application: first, that any potential relief would be negligible and therefore “not worth the candle”; second, that the claim had been brought against the wrong parties, asserting that the relevant domain names were owned and operated by a US entity, Best Drinks LLC; and third, that parallel proceedings in the Eastern District of Virginia where the dot-com websites were registered made that forum the more appropriate venue.

The Court’s reasoning

The Court held that the English claim was focused on alleged infringing acts in this jurisdiction through UK-targeted websites. Evidence from the US proceedings suggested the domain names may have been assigned to Best Drinks LLC, but its listed London address linked back to both D3 and Prosecco International.

HHJ Hacon was therefore not persuaded that Best Drinks LLC alone was responsible. The claim against the defendants had a real prospect of success.

The Court also rejected the “not worth the candle” argument. Given the admitted use of PROSECCO on the websites in connection with unrelated products and services, it could not conclude that any harm was trivial.

Outcome and implications

The defendants failed to meet the high threshold for strike out or summary judgment, so the claim will proceed toward trial. For brand owners, certification mark holders and trade bodies, the judgment shows that early disposal will be difficult where there is evidence of targeted use, unresolved factual issues and potential reputational or commercial harm.