Two London wine entrepreneurs are preparing for a High Court battle with the Italian state body responsible for protecting Prosecco, facing allegations of trademark infringement and selling counterfeit sparkling wine.
Allegations of Misuse
The Consortium for the Protection of Controlled Designation of Origin Prosecco (Consorzio) claims that father-and-son team Michael and Ralph Goldstein, along with their company Prosecco International Ltd, have improperly used the protected Prosecco name. The consortium alleges that the Goldsteins employed the designation on websites and marketed non-genuine sparkling wine in the UK under the Bella Principessa brand, mislabelling it as Prosecco and exploiting its protected status.
Defendants' Position
However, the Goldsteins and their company vigorously contest the claim, denying any infringement. They assert that their white and rosé Bella Principessa sparkling wines "conform to the Prosecco specification". Despite acknowledging that the entrepreneurs' evidence regarding their wines meeting the specification "seems persuasive", Judge Richard Hacon has ordered the dispute to proceed to a full High Court trial.
Background of Prosecco Protection
Prosecco was officially recognised by the Italian government in 2009 as a distinct wine restricted to specific areas of north-eastern Italy. This led the Consorzio to make stringent efforts to safeguard its name from abuse. In a ruling this week, Judge Hacon explained: "As is widely known, Prosecco is the name given to certain wines produced in the northeast of Italy. The Prosecco protected designation of origin is protected in this country under EU Regulations, now assimilated into UK law."
The Lawsuit
The Consorzio is suing Michael and Ralph Goldstein and Prosecco International Ltd, which was established in 2018, over a "long list of acts which are said to constitute an infringement of Consorzio’s rights under the regulation". Prosecco International is a London-based company involved in various alcohol production and distribution activities, including distilling, rectifying, and blending spirits, as well as wine manufacturing. Michael served as a director from 2018 to 2024, while his father Ralph is currently a director.
The action focuses on allegations of infringement of European regulations and the PROSECCO certification mark—a type of UK trade mark—on two websites operating under the domain names Prosecco.com and Proseccodoc.com, which "target the UK" by using the Prosecco name.
Details of the Claim
The particulars of claim cite the use of PROSECCO in association with and on bottles of sparkling wine called Bella Principessa. The Consorzio does not accept that the Bella Principessa and Prosecco Rosé wines conform to the Protected Designation of Origin (PDO) specification. The Goldsteins and their company, however, insist that both wines pass the test to be designated Prosecco, pointing to evidence that the judge described as "on its face...seems persuasive".
Marketing Claims
In online advertising for the Bella Principessa brand, Michael Goldstein states: "We couldn't find a Prosecco that tasted exceptional, looked beautiful and felt meaningful enough to share with the people who matter most, so we made one – Bella Principessa. The Prosecco guests are proud to ask for by name. It comes in two expressions: Rosé and Brut. Always in good taste." The wine is described as being "crafted in the sunlit hills of northeastern Italy's Veneto region in partnership with a fourth-generation winery". The advert further claims: "Bella Principessa is a premium Italian Prosecco produced under Italian Prosecco D.O.C. standards...Each ceramic-painted bottle, adorned with Italian floral artwork and the Bella Principessa butterfly, is as striking on the table as the wine is in the glass."
Defence and Counterarguments
Ruling on a bid by the Goldsteins and the company to strike out the claim, the judge noted that Michael and Ralph Goldstein are alleged to have had significant control over the acts of Prosecco International. In denying infringement, the defendants maintained that the Consorzio was suing the wrong target, as the real owner of the offending website domain names is a US drinks company. They admitted that non-Prosecco drinks, including vodka and wine in a can, appeared on older versions of the websites, though they claimed none were sold. They argued this did not amount to infringement and that such content has now ceased. They contend that the websites now only feature Bella Principessa wine and Prosecco Rosé wine, both of which conform to the PDO Prosecco specification. Specifically, the Bella Principessa wine belongs to a subcategory of Prosecco wines designated Prosecco DOCG, which are by definition Prosecco DOC wines.
Judge's Decision
Dismissing the defendants' application, Judge Hacon stated that the evidence supporting the defence that the wines conform to Prosecco specifications was filed late and must be considered at a full trial. He said: "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 the 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." He concluded: "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. The question whether the content of the websites in issue constitutes infringement of the Regulation and the Certification Mark must be resolved at trial."
