B e f o r e :
HIS HONOUR JUDGE HACON (sitting as a Judge of the High Court) ____________________
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Transcript of the Stenograph Notes of Marten Walsh Cherer Ltd., 2nd Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP. Telephone No: 020 7067 2900. DX 410 LDE Email: [email protected] Web: www.martenwalshcherer.com
MS. ASHTON CHANTRIELLE (instructed by Bird & Bird LLP) appeared for the Claimant. MR. DANIEL JAMES STUART DAVIES (Solicitor of 360 Law Services Limited) appeared for the Defendants. ____________________
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HIS HONOUR JUDGE HACON:
This is an application by the defendants to strike out the claim in these proceedings pursuant to CPR 3.4(2)(a) or (b), or alternatively for summary judgment in the defendants' favour. I recently summarised the law on striking out a claim, or seeking summary judgment, in Melaris v Mindhouse Productions Ltd [2026] EWHC 690 (IPEC):
Since both sides rely on evidence, it is simpler, as in Melaris , for me to focus on the defendants' application for summary judgment.
Daniel Davies, solicitor and director of 360 Law Services Limited, appears for the defendants. Ashton Chantrielle of counsel appears for the claimant.
The claimant ("the Consorzio"), is the body appointed by the Italian Ministry of Agriculture, Food Sovereignty and Forests to protect and promote the Protected Designation of Origin "Prosecco" (the "PDO Prosecco"). As is widely known, Prosecco is the name given to certain wines produced in the northeast of Italy. The Prosecco PDO is protected in this country under EU Regulation No. 1308/2013, (the "Regulation"), now assimilated into UK law, pursuant to section 3 of the European Union (Withdrawal) Act 2018, as amended.
Aside from relying on the Regulation that the Consorzio relies also on its ownership of UK registered certification mark no. 3257427 PROSECCO, (the "Certification Mark").
The first defendant ("Prosecco International") is a UK company which describes its business as including distilling, rectifying and blending spirits, manufacturing wine from grape and other business support activities. The second defendant ("Michael Goldstein") was a director of Prosecco International between August 2018 and February 2024. The third defendant ("Ralph Goldstein"), who is Michael's father, is currently a director of Prosecco International. Michael and Ralph Goldstein are alleged either to have had, or to have, significant control over the acts of Prosecco International of which complaint is made.
The Consorzio alleges that the defendants have infringed the Certification Mark, and have infringed art.103(2) of the Regulation. The complaint centres on two websites, www.prosecco.com and www.proseccodoc.com, respectively operating under the domain names prosecco.com and proseccodoc.com.
The Consorzio's Particulars of Claim state that the two websites target the UK. Mr. Davies told me at today's hearing that this is disputed. However, the Particulars of Claim provide reasons given in support of that allegation which, at the least, make the issue of targeting the UK one which would have to be resolved at trial, if there is to be a trial.
The Particulars of Claim plead a long list of acts which are said to constitute an infringement of Consorzio's rights under the Regulation. Rather than quote them all I will say that they include the following uses of the sign PROSECCO on one or both of the websites.
First, in association with drinks which do not comply with the PDO Prosecco specification, including Angel Spirits Vodka and Signorina Rose Wine in a Can. The Particulars also cite the use of PROSECCO in association with and on bottles of sparkling wine called "Bella Principessa". One such bottle was the subject of a trap order, to which I will return.
Secondly, the Particulars say that the sign PROSECCO has been used in association with services, including investment opportunities and partnership opportunities, which have nothing to do with the PDO Prosecco specification.
The third I will mention is alleged use of the sign PROSECCO as part of Prosecco International's name.
Fourthly, the Consorzio complains of use of the sign PROSECCO in a blog appearing on one of the websites under the name "Prosecco Blog".
The fifth example I will give is use of the sign PROSECCO in relation to Asolo Prosecco wine, which the Consorzio says does not conform with the PDO Prosecco specification.
The Consorzio also pleads in its Particulars that the acts complained of, including the ones I have just listed, constitute infringement of the Certification Mark under section 10(2) and/or section 10(3) of the Trade Marks Act 1994.
In their application today, the defendants make three points, each of which, they say, means that the Consorzio's claims have no real prospect of succeeding at trial.
The first is that the relief to which the Consorzio would be entitled, if it were to win at trial, other than the relief relating to the ownership and control of the domain names prosecco.com and proseccodoc.com, is negligible, such that the proceedings are not worth the candle: see Jameel v Dow Jones & Co Inc [2005] EWCA Civ 75 , referred to recently in Farley v Paymaster (1836) Limited [2025] EWCA Civ 1117 at [96].
In this regard the defendants admit that drinks which are not Prosecco wines – what I will call non-Prosecco drinks – have featured on an older version of the two websites in issue, although they say none of those drinks were sold. They contend that this did not amount to an infringement of any rights held by the Consorzio and in any event the appearance of the non-Prosecco drinks on the two websites has now ceased. They say the websites now only feature the Bella Principessa wine and a Prosecco Rosé wine, both of which conform to the PDO Prosecco specification. In particular, the Bella Principessa wine, which was the subject of the trap purchase, belongs to a subcategory of Prosecco wines designated Prosecco DOCG wines which all are, by definition, Prosecco DOC wines.
The second point raised is that the claim has been brought against the wrong defendants. The defendants say that since before the claim was issued the owner and operator of the domain names in issue is a US company called Best Drinks LLC.
Thirdly, and related to this, there are currently proceedings in the Eastern District of Virginia in the US between the Consorzio and Best Drinks LLC. That jurisdiction is the location of the registry of the dot-com websites. The defendants say that it is therefore the proper forum for the present dispute.
In argument, Mr. Davies further pointed to the relief sought in the Particulars of Claim which includes a restraint on the transfer of the domain names.
I observe now that all the injunctive relief sought is drafted to be limited in terms of acts done in the UK. Exactly what that means with regard to restraining the transfer of domain names may have to be resolved if the question of relief were to arise after a trial. The defendants apprehend that the court will be asked to order the transfer of the domain names to the Consorzio. Ms. Chantrielle told me that there is no such intent and there is no pleaded relief to that effect.
I will begin with the defendants' contention that these proceedings should have been brought against Best Drinks LLC and the related contention that the issues in this court would be better heard in the court of East Virginia.
The first point to make about this is that there has been no challenge to the jurisdiction of this court within the time proscribed by the rules, so there is a formal barrier to the defendants' wish that this court should cede jurisdiction.
In any event, to my mind these contentions misunderstand the nature of the case brought against the defendants in this court. There is no claim for either a declaration that the Consorzio owns the two domain names or for an order transferring ownership to the Consorzio. The claims pleaded and raised in this court are solely directed to alleged acts of infringement carried out in this jurisdiction by means of the two websites in issue, which websites are said to be targeted at the UK. If the Consorzio were to succeed at trial, the relief granted would be limited to the presentation of the two websites, insofar as they are found to be directed to UK consumers, and any relief as to damages would relate to the impact of the infringing acts in this jurisdiction alone. The claim in this court is thus wholly independent of the issues in dispute in the East Virginia court.
According to evidence filed by the defendants in East Virginia the domain names were assigned by Prosecco International to Best Drinks LLC on 5th September 2022. It does not follow that none of the defendants in these proceedings controlled the presentation of the two of websites insofar as they were targeted at UK consumers. No evidence has been filed by either Michael or Ralph Goldstein regarding their actions in this regard, including their actions done through Prosecco International, if any. The defendants' only evidence comes from Mr Davies, their solicitor, presumably on instructions. Even that evidence does not provide detail about the role of each of the defendants in the creation and presentation of the two websites. As to the role of Best Drinks LLC, if any, evidence filed in the United States by the defendants states that the place of business of Best Drinks LLC is London at an address which is Ralph Goldstein's residential address and is also Prosecco International's address for service.
Even if I had been convinced that unarguably all the acts of which complaint is 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.
I would add that there was a suggestion in Mr. Davies's written argument that the Consorzio knew all along that it had sued the wrong defendant. I take this to be an argument in support of the allegation of an abuse of process. Leaving aside what the Consorzio knew or should have known, that point falls away since I have found that there are reasonable objective grounds for concluding that the defendants' current claim against the current defendants has a reasonable prospect of success.
I turn to the argument that the claim is not worth the candle. The defendants admit that until a date, which I do not believe has been identified, the two websites in issue presented the sign PROSECCO in association with drinks and services unrelated to Prosecco wines, i.e. wines which satisfy the specification of the PDO Prosecco.
I do not accept that I can assume on the evidence now available before the court that the damage caused to the Consorzio as a consequence of that admitted use of the sign PROSECCO in the past has been negligible. This may be a matter for evidence at the trial, dependent upon which the trial judge may or may not grant an inquiry as to damages or an account of profits. However, on the evidence available to the court now, it may be that the damage was significant. Moreover, no undertaking has been formulated or offered with regard to the presentation of the websites by the defendants. Consequently, in my view, the Consorzio has a real prospect of obtaining an appropriate injunction in relation to the websites.
Although I do not regard it as being central to the application today, as I have said the defendants' case is that the Bella Principessa and Prosecco Rosé wines are genuine PDO Prosecco wines. In support of this contention, the defendants have provided, in one witness statement filed two days ago and in another witness statement filed yesterday, evidence to support this contention. On its face the evidence seems persuasive. On the other hand, I was told by Ms. Chantrielle that the Consorzio does not accept that the Bella Principessa and Prosecco Rosé wines conform to the PDO specification. The defendants' evidence on this was presented late very in the day, in breach of the rules under Part 24, and on balance it seems to me this too must be an issue to be resolved on evidence at the trial.
In short, the question whether the content of the websites in issue constitutes infringement of the Regulation and the Certification Mark must be resolved at trial. For the foregoing reasons I take the view that the defendants have not shown that the Consorzio has no prospect of succeeding in its claims for infringement of the Regulation and Certification Mark.
There is one final point. Mr. Davies submitted that parts of the claim could be struck out now. I do not accept that there are any parts of the claim which are clearly separately identifiable and in relation to which the Consorzio has no prospect of succeeding at trial. Certainly the bulk of them must go to trial, and I see 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 Consorzio's overall claim.
Accordingly, the application is dismissed.