MEZZACORONA wine mark not in breach of EU regulation

In Miguel Torres SA v Cantine Mezzacorona SCARL, the Court of Appeal has upheld the registration of the MEZZACORONA mark for wines. It found that the mark did not breach Council Regulation 2392/89 on the description of wines and thus could not be opposed on the basis of Section 3(4) of the Trademarks Act 1994, which precludes the registration of a mark if its use is prohibited by any provision of EU law.

Cantine Mezzacorona, one of the largest wine growers in the Trentino area in northeast Italy, named its wine after the small town of Mezzocorona, which was called Mezzacorona when the region was part of the Austro-Hungarian empire. Cantine has used MEZZACORONA widely since 1983 and has registered it in many countries, including several EU member states. The name has also been used in the United Kingdom since 1988 where Cantine proceeded to register it as a device mark including a half-crown design (mezzacorona also meaning 'half crown' in Italian).

Miguel Torres (Torres), a Spanish wine producer, opposed Cantine's registration on the basis of (i) its registrations for a number of marks consisting of pictures containing crowns and the words 'Coronas' and 'Gran Coronas' (meaning 'crowns' and 'great crowns' in Spanish), and (ii) Section 3(4) of the Trademarks Act 1994, which provides that registration of a trademark is prohibited if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law, or by any provision of EU law. Here, Torres claimed that the use of MEZZACORONA as a trademark is precluded under Council Regulation 2392/89, which prohibits, among other things, the use as a trademark of a name that is similar to a geographical area.

The UK Patent Office dismissed the opposition, finding neither a likelihood of confusion nor a breach of the regulation on wine description. The High Court upheld the decision. Torres appealed on the sole claim that Cantine's mark violated the regulation on wine description.

The Court of Appeal upheld the lower court decision. It rejected Torres's contention that Cantine's mark, which consists of the name of a geographical area smaller than the specific region of wine production recognized by EU law (here, the Trentino region), failed to comply with the conditions set out in Article 13 - namely that (i) that smaller area be well defined, and (ii) all the grapes used to make the wine come from that region.

Cantine did not dispute that point. Instead, it argued that the mark was permitted under Article 11(2)(c), which allows a label for quality wines produced in a specific region to include a brand name in accordance with the conditions in Article 40, which in turn provides that the description and presentation of products - and any advertising for these products - must not be incorrect or likely to cause confusion or mislead the persons to whom they are addressed. Article 40(2)(b) specifically prohibits brand names that, in whole or in part, are identical to the description of the product "unless the products used for making the final products are entitled to such description or preservation".

In this respect, Torres argued that the description and advertising of the Cantine wine were incorrect. The court disagreed, finding that there was nothing "incorrect" about the use of Mezzacorona as it is the name of the producer and bottler as well as of the place where the wine is made and the headquarters of the bottler are based.

Torres's next submission was that the brand name was "identical to the description" (ie, the place name Mezzocorona) that it was not entitled to, thus falling foul of Article 40(2)(b). The court dismissed this argument, finding that (i) there was no identity between Cantine's mark and the geographical name under the strict test set out by the European Court of Justice (ECJ) in LTJ Diffusion SA v SADAS Vertbaudet SA (see ECJ interpretation of 'identical' narrows trademark owners' rights), and (ii) Article 40(2)(b) only relates to the description of the "product used for making the final product", which was irrelevant here.

The court could find nothing to suggest that a trademark that contains or consists of a geographical name that is not regulated by EU provisions should be prohibited. The court also referred to Borie Manoux SARL v Institut National de la Propriété Intellectuelle as confirmation of the position under ECJ case law. In that case, the ECJ held that Article 40 should be interpreted as not prohibiting the use of a trademark that contains a geographical reference, unless there is a real risk that use of such a mark will mislead consumers and, as a result, alter their economic behaviour (see ECJ opens door for wine mark registrations).

The Court of Appeal therefore dismissed the appeal and allowed the mark to stand.

Colleen Donovan, Hammonds, London