Geographical Indications - Consorzio di Tutela Della Denominazione di Origine Controllata Prosecco v Prosecco International Ltd.

Vineyards in the Prosecco Region

Author Civvì Licence: CC BY-SA 4.0  Source: Wikimedia Commons

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Prosecco International Ltd and others[2026] EWHC 912 (IPEC) (15 April 2026)

The  Consorzio di Tutela della Denominazione di Origine Controllata Prosecco ("the PDO Prosecco")  is the body appointed by the Italian Ministry of Agriculture to protect and promote the Protected Designation of Origin "Prosecco".  Prosecco International Ltd. ("Prosecco International") is an English company which describes its business as "including distilling, rectifying and blending spirits, manufacturing wine from grape and other business support activities."  Mr Ralph Goldstein is a director of Prosecco International and Mr Michael Goldstein is a former director.

The Application

PDO Prosecco have brought proceedings against Prosecco International and Messrs Ralph and Michael Goldstein in the Intellectual Property Enterprise Court for the infringement of its protected designation of origin under art 103 (2) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council and certification mark number UK 3257427 under s.10 (2) and (3) of the Trade Marks Act 1994.  The claimant objects to the websites at www.prosecco.com and www.proseccodoc.com, which operate under the domain names <prosecco.com> and <proseccodoc.com>, respectively. Prosecco International and the Goldsteins applied for the action to be struck out under CPR 3.4 (2) (a) or (b) or CPR Part 24. They argued that the relief to which PDO Prosecco would be entitled were it to succeed would be negligible, the owner and operator of those websites were Best Drinks LLC in the USA and that there was ongoing litigation between  PDO Prosecco and Best Drinks LLC in the US District Court for the Eastern District of Virginia.  

The Decision

The application came before HH Judge Hacon.  He delivered judgment on 15 April 2026 (see Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Prosecco International Ltd and others[2026] EWHC 912 (IPEC)). By para [34] of his judgment, the learned judge dismissed the defendants' application.

Applicable Legal Principles

At the start of his judgment, Judge Hacon recalled that he had summarised the law on striking out a claim, or seeking summary judgment, in Melaris v Mindhouse Productions Ltd [2026] EWHC 690 (IPEC) between paras [14] and [18] of that judgment:

"[14] The principles which apply to an application for summary judgment are set out in the well-known passages from the judgment of Lewison J in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch). It has been quoted several times by the Court of Appeal, see, for example, Malik v Henley Homes plc [2023] EWCA Civ 726 at paragraph 77. This is the relevant passage from Easyair at paragraph 15:

'The correct approach on applications by defendants is, in my judgment, as follows:
i) The court must consider whether the claimant has a 'realistic' as opposed to a 'fanciful' prospect of success: Swain v Hillman [2001] 1 All ER 91;
ii) A "realistic" claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8];
iii) In reaching its conclusion the court must not conduct a "mini-trial": Swain v Hillman;
iv) This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at [10];
v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5) [2001] EWCA Civ 550;
vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd  [2006] EWCA Civ 661, [2007] FSR 63, [2006] ETMR 65;
vii) On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd [2007] EWCA Civ 725.'
[15] The test in law under CPR 3.4 (2) (a) is not quite the same, although there have been differences of view as to whether this makes any practical difference, see King v Stiefel [2021] EWHC 1045 (Comm) at paragraphs 26-27 and Libyan Investment Authority v King [2020] EWCA Civ 1690 at paragraph 57(4). It will make no difference in the present case, so I can focus on the claim for summary judgment.
[16] Mindhouse relied on paragraph 15 (iv) of Easyair and also on passages from other judgments in a similar vein. In Maranello Ross Ltd v Lohomij BV [2021] EWHC 2452 (Ch), HHJ Keyser QC said at paragraph 19:

'Accordingly, where there are disputed questions of fact, it will not generally attempt to determine where the probabilities lie. However, and importantly, the court ought to carry out a critical examination of the available material and is not bound to accept the mere say-so of anybody; where it is clear that a factual case is self-contradictory or inherently incredible or where it is contradicted by the contemporaneous documents, the court, after careful consideration of the evidence that is currently before it and having regard to the nature of such further evidence as might reasonably be expected to be available at trial, is entitled to reject that case even on a summary basis. The court will not be dissuaded from giving judgment by mere Micawberism.'

[17] This was approved on appeal by the Court of Appeal, see Maranello Rosso Ltd v Lohomij BV [2022] EWCA Civ 1667, at paragraph 77.
[18] In Korea National Insurance Corporation v Allianz Global Corporate & Specialty AG [2007] EWCA Civ 1066, the Court of Appeal ruled that the party responding to an application for summary judgment must go beyond just an assertion that the evidence at trial will support the pleaded case. The party in question should, in evidence at the application, set out the nature of the evidence anticipated at the trial, its source and relevance. Moore-Bick LJ, with whom Jacob and Buxton LJJ agreed, said at [14]:

'In the present case Allianz criticised the judge for having failed to make allowance in its favour for the likelihood that additional evidence relating to various aspects of this defence would be available at trial to cast a more benevolent light on events, but in my view that criticism is unfounded. It is incumbent on a party responding to an application for summary judgment to put forward sufficient evidence to satisfy the court that it has a real prospect of succeeding at trial. If it wishes to rely on the likelihood that further evidence will be available at that stage, it must substantiate that assertion by describing, at least in general terms, the nature of the evidence, its source and its relevance to the issues before the court. The court may then be able to see that there is some substance in the point and that the party in question is not simply playing for time in the hope that something will turn up. It is not sufficient, therefore, for a party simply to say that further evidence will or may be available, especially when that evidence is, or can be expected to be, already within its possession, as is the case here. Allianz was quite entitled, if it so chose, to confine its evidence to the factual allegations in the defence, but having done so, and having failed to give any indication of what other evidence can be expected to be available at trial, it cannot complain that the court has not speculated about whether there might be any such evidence, and if so what its nature might be.'"

Whether the Proceedings should have been brought against Best Drinks in East Virginia

Judge Hacon noted that the defendants had not challenged IPEC's jurisdiction.  The dispute in the USA concerns the ownership of the <prosecco.com> and <proseccodoc.com>domain names.  The claim in England is over the infringement of  PDOProsecco's protected designation of origin and trade mark.  The two cases are independent of each other.   No evidence had been filed on the Goldsteins' activities. Best Drinks's place of business is Ralph Goldstein's home address. It is also  Prosecco International's address for service.  Even if His Honour had been persuaded that all the acts of which complaint was made were done solely by or through Best Drinks LLC, the correct way forward would have been to join Best Drinks LLC as a party rather than granting summary judgment. As it is, the question of who has been and who now is responsible for the acts alleged to infringe must be decided on the evidence at trial.

Whether the Relief would be Negligible

As to the argument that the claim would not be worth the candle, the judge did not accept that the damage to the claimant would turn out to be negligible.  On the evidence already available, the damage might turn out to be significant. No undertaking relating to the websites had been formulated or offered by the defendants. Consequently, PDOProsecco had a real prospect of obtaining an appropriate injunction in relation to the websites.

Whether the Defendants' Wine is Prosecco

Although the issue was not central to the application, the defendants had argued that their wine was Prosecco.  This was disputed by the claimant.  The judge decided that it should be determined at trial.

Whether Parts of the Particulars of Claim should be struck out

The defendants argued that parts of the claim could be struck out now. His Honour did not accept that there were any parts of the claim that were clearly separately identifiable and in relation to which the Consorzio had no prospect of success. In his view, the bulk of them must go to trial.  He saw no value in spending time on argument about the possibility (at best) of pruning here and there when this would have no significant effect on the overall claim.

Comment

Although this is a very short judgment, it contains a lot of good stuff.  It is a reminder of the different ways in which geographical indications can be protected.   For a laugh, readers are referred to my article in NIPC Yorkshire from 30 Aug 2013 Geographical Indications - "If it's outside Yorkshire it's not worth ..................!"  Judge Hacon's review of the authorities on striking out and summary judgment from Melaris v Mindhouse Productions Ltd. discusses conveniently the relevant principles.  The question whether the claim is worth the candle considers the judgment in  Jameel v Dow Jones & Co Inc [2005] EWCA Civ 75, which is mentioned in para [96] of Farley v Paymaster (1836) Limited [2025] EWCA Civ 1117.

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