EU trade mark disputes: SEQUOÏA and PriSecco v. Prosecco

EU trade mark dispute: SEQUOÏA 

On 24 September 2025, the General Court of the European Union ruled in Case T-301/24, upholding the revocation of the EU trade mark SEQUOÏA (no. 005866074) due to a lack of genuine use.

The Spanish company Rústicas del Guadalquivir SL had registered the word mark 'SEQUOÏA' with the EUIPO in 2009 and renewed it in 2017 for goods in Class 31 of the Nice classification, in particular fresh fruits and vegetables. However, the US company Fall Creek sought revocation under Article 58(1)(a) EU Trade Mark Regulation (EUTMR) 2017/1001, claiming that the mark had not been used in the EU for the protected goods for an uninterrupted five-year period. The Cancellation Division granted the application in full and the Board of Appeal confirmed this, noting that the term 'sequoia' was primarily used to refer to a type of fruit and that the trade mark had not been used as trade mark. In response, Rústicas del Guadalquivir appealed to the General Court.

Upon reviewing all the evidence, the Court concluded that 'Sequoia' was predominantly used by Rústicas del Guadalquivir as a variety name for certain fruits, such as cherries or raspberries, rather than as an indication of the commercial origin of the goods it commercialised. The Court pointed out that licence agreements referred to 'variety Sequoia' for cherry trees, and that multiple invoices described 'Sequoia cherry' or 'Sequoia raspberry', sometimes alongside different trade marks, which reinforced the varietal reading. Furthermore, even though a January 2022 invoice placed 'Sequoia' under a column headed 'mark', other invoices from around the same time listed it as 'variety' or 'variety/mark', creating inconsistency. Moreover, internal schedules that referred to a 'registered trade mark' pointed to supporting documents in which 'Sequoia' appeared only as a 'variety'. Lastly, the occasional use of the ® symbol after 'Sequoia' was not decisive, given its irregular use, and because it does not in itself show that the public perceives the sign as a mark.

Rústicas del Guadalquivir argued that, in the wholesale trade of fruit and vegetables, it is common to use the term 'variety' without a strict botanical meaning, and that 'sequoia' is used to describe their products in practice. The Court responded that what matters is how the relevant public (both end consumers and professionals) perceives the sign in the submitted documents. In this context, 'sequoia' is ambiguous or unequivocal as a varietal term, and therefore its use as a trade mark in the relevant period and territory was not demonstrated.

Lastly, the company claimed that SEQUOIA does not meet the requirements for protection as a plant variety denomination, meaning that 'sequoia' must necessarily refer to a trade mark. However, the General Court held that this does not follow: a term may be used in trade as the name of a variety without proving that it identifies the commercial origin of the goods. Consequently, the Court dismissed the appeal.

EU trade mark dispute: PriSecco v. Prosecco

On 24 September 2025, the General Court of the European Union ruled in Case T-406/24, upholding the invalidity of the EU trade mark PriSecco (no. 014224083) for 'non-alcoholic cocktails' in Class 32.

In 2020, the Consorzio di Tutela della D.O.C. Prosecco applied to invalidate the mark, which was registered by the German company Manufaktur Jörg Geiger GmbH, on the basis of the protected designation of origin 'Prosecco' (registered as a PDO for wine since 1 August 2009). Both the Cancellation Division and the Board of Appeal granted the Consortium's request. The Board confirmed the finding of invalidity under Article 53(1)(c) in relation to Article 8(4) of Regulation No 207/2009 (as applicable at the time) and Article 103(2)(b) of Regulation No 1308/2013 regarding PDO protection against evocation.

Article 8(4) of Regulation No 207/2009 allows opposition to or invalidation of an EU trade mark if it is based on an earlier sign that is not a registered mark. This sign must be used in trade, have significance that extends beyond a local level, exist under the governing law and confer the right to prohibit the use of a later mark. Designations of origin fall within this category because they are used in commerce and are subject to a regime that can prohibit incompatible later marks.

Article 103(2)(b) of Regulation No 1308/2013 protects PDOs against any misuse, imitation or evocation, even when the products are not identical or the true origin is indicated. Evocation occurs when the PDO-protected product clearly and directly comes to the consumer’s mind upon seeing the challenged sign.

The Court confirmed that, given PriSecco’s filing date of 2015, the version of Regulation No 207/2009 in place prior to 2015 applied. Even then, a PDO could qualify as an earlier right under Article 8(4). The Court rejected the German company’s claim that its 2008 German mark “PriSecco” had seniority, because the relevant priority is that of the EU filing, which occurred after Prosecco’s PDO registration in 2009. While seniority preserves national rights within their own sphere, it does not displace PDO protection against a later EU mark.

The Court identified a high level of visual and phonetic similarity between PriSecco and Prosecco. Both have eight letters, share seven of them in the same order and differ only in the third letter ('i' versus 'o'). The PDO 'Prosecco' is almost entirely embedded in 'PriSecco', to the extent that the latter may be perceived as a mere misspelling. The argument that 'secco' means 'dry' in Italian was dismissed, as this does not affect the comparison because the sign is a word mark and graphic features such as internal capitals are irrelevant.

Lastly, the court emphasised that evocation can occur even if the goods are not similar. In this case, both signs cover beverages that are consumed socially, such as aperitifs or accompaniments to meals, and are sold through similar channels, such as supermarket shelves, bars or cafés. In this context, the similarity between the two signs is sufficient for a substantial proportion of EU consumers to immediately associate PriSecco with PDO-protected Prosecco wine when they see it in non-alcoholic cocktails. As a result, the Court dismissed the action in full and confirmed the invalidity of PriSecco for the limited Class 32 goods.