Miguel Torres S.A. v Cantine Mezzacorona S.C.A.R.L.

For section 3(4) of the Trade Marks Act 1994, registration is barred only to the extent that use of the mark is prohibited by UK law or Community law. The wine-labelling Regulation provided independent routes for permitted label information. A mark could qualify as a brand name under Article 11(2)(c), even though it did not qualify as a smaller geographical unit under Article 11(2)(l) and Article 13. Article 40 focused on real consumer deception, not an abstract risk of confusion. Strict identity required identity in the trade-mark sense. The mark was therefore permitted and its use was not prohibited.

Cantine applied to register the Mezzacorona word and device mark for wines in class 33. Miguel Torres opposed the application, relying initially on conventional deceptiveness grounds and subsequently on section 3(4) of the Trade Marks Act 1994. The Hearing Officer and Neuberger J rejected the conventional grounds, which were not pursued on appeal.

The remaining issue was whether Regulation 2392/89, later replaced by Regulation 493/99 without relevant changes, prohibited use of the mark. The dispute concerned whether the mark was a brand name permitted by Article 11(2)(c) and Article 40, or an unauthorised geographical reference that failed to satisfy Article 11(2)(l) and Article 13.

1. Disposition. The Court of Appeal unanimously dismissed the appeal. The mark was not prohibited by the wine-labelling Regulation, so the section 3(4) ground of opposition failed. The appellant was ordered to pay the respondent’s agreed costs of £20,000 within 28 days.
2. Statutory gateway. Section 3(4) of the Trade Marks Act 1994 applies only where use of a mark is prohibited in the United Kingdom by enactment, rule of law or Community law. The Regulation had direct effect in the United Kingdom through the Rome Treaty and the European Communities Act 1972. The court accepted that, if the use were not permitted by Article 11, Article 44 would prohibit it. The decisive question was therefore whether Article 11 permitted the use.
3. Article 11. The mandatory and supplementary categories of information in Article 11 were independent. Although the mark could not be used under Article 11(2)(l) as the name of a smaller geographical unit because the Article 13 conditions were not met, that did not prevent it qualifying under Article 11(2)(c) as a brand name. The mark was plainly a trade mark, consisting of repeated wording and a device. It supplemented other required label information, including the specified region, volume and producer details.
4. Article 40. The court accepted that incorrect might have a wider meaning than misleading, but found nothing incorrect about the use of MezzaCorona. Under Article 40(2), the mark was not identical to Mezzocorona. Identity was a strict trade-mark concept, and the visual and spelling differences were sufficient. The reference to products used in making the final product was also irrelevant on these facts.
5. Consumer deception. The ECJ authorities confirmed that a geographical reference in a brand name is not prohibited without a real risk of misleading consumers and altering their economic behaviour. This applied to geographical units larger or smaller than the specified region. A conspicuous brand name, or an abstract risk of confusion, was insufficient. The absence of any evidence that the mark had misled consumers supported the conclusion that its use was lawful.

1. Court of Appeal (Civil Division): On 19 December 2003, dismissed the appeal and ordered payment of £20,000 costs. The judgment is reported at [2003] EWCA Civ 1861.
2. Chancery Division: Neuberger J decided the matter on 26 March 2003. He rejected the conventional deceptiveness grounds and the remaining challenge under section 3(4) of the Trade Marks Act 1994. Permission to appeal was granted by Aldous LJ.