Prosecco Trademark Dispute, EWHC 912, 15th Apr

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Consorzio di Tutela Della Denominazione di Origine Controllata Prosecco v Prosecco International Ltd & Ors [2026] EWHC 912 (IPEC) (15 April 2026)
URL: https://www.bailii.org/ew/cases/EWHC/IPEC/2026/912.html
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[2026] EWHC 912 (IPEC) |
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| Neutral Citation Number: [2026] EWHC 912 (IPEC) |
| Claim No. IP-2025-000094 |
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT

| The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL |
| 15th April 2026 |
B e f o r e :

HIS HONOUR JUDGE HACON
(sitting as a Judge of the High Court)

Between:
| | CONSORZIO DI TUTELA DELLA DENOMINAZIONE DI ORIGINE CONTROLLATA PROSECCO
(a voluntary producers' association incorporated under the laws of Italy) | Claimant / Appellant |
| | - and - | |
| | (1) PROSECCO INTERNATIONAL LTD
(2) MICHAEL GOLDSTEIN
(3) RALPH GOLDSTEIN | Defendants / Respondents |

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: info@martenwalshcherer.com
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.

HTML VERSION OF JUDGMENT APPROVED ____________________

Crown Copyright ©

1. HIS HONOUR JUDGE HACON:
2. 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):
4. "[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:
5. > 'The correct approach on applications by defendants is, in my judgment, as follows:
6. > > 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;
7. > > 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];
8. > > iii) In reaching its conclusion the court must not conduct a "mini-trial": Swain v Hillman;
9. > > 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];
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;
11. > > 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 [2007] SR 63;
12. > > 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.'
13. [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.
14. [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:
15. > '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.'
16. [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.
17. [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]:
18. > '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.'"
19. Since both sides rely on evidence, it is simpler, as in Melaris, for me to focus on the defendants' application for summary judgment.
21. Daniel Davies, solicitor and director of 360 Law Services Limited, appears for the defendants. Ashton Chantrielle of counsel appears for the claimant.
23. 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.
25. 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").
27. 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.
29. 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.
31. 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.
33. 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.
35. 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.
37. 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.
39. The third I will mention is alleged use of the sign PROSECCO as part of Prosecco International's name.
41. Fourthly, the Consorzio complains of use of the sign PROSECCO in a blog appearing on one of the websites under the name "Prosecco Blog".
43. 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.
45. 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.
47. 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.
49. 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].
51. 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.
53. 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.
55. 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.
57. 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.
59. 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.
61. 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.
63. 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.
65. 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.
67. 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.
69. 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.
71. 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.
73. 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.
75. 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.
77. 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.
79. 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.
81. 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.
83. Accordingly, the application is dismissed.
85. - - - - - - - - - -

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URL: https://www.bailii.org/ew/cases/EWHC/IPEC/2026/912.html