Reference:  RPC 26;  ETMR 39
Court: Court of Appeal
Judge: Jacob and Peter Gibson LJJ & Sir Martin Nourse
Date of judgment: 19 Dec 2003
Summary: Trade Marks - EC Law - Origin marking - Wine Labelling - TRIPs - Council Regulation 2392/89
Instructing Solicitors: Herbert Smith
Cantine Mezzacorona (Cantine) applied to register the trade mark MEZZACORONA (plus device) in respect of “wines, spirits and liqueurs” claiming an International priority date based on a registration in Italy. The Italian words in the mark mean half crown. Cantine is a wine growers’ co-operative producing a number of red and whit wines from a number of different types of grape. Its registered office was in Mezzacorona in the Trentino region of north-east Italy. The population of Mezzocorona was about 5,000. It was one of the largest wine growing co-operatives in the Trentino area. The Trentino area was divided into 3 or 4 uncontiguous parcels and Mezzocorona was on the edge of one of those parcels. Cantine’s choice of the name “Cantine Mezzacorona” was said to reflect the fact that between 1889 and 1918 when the area was within the Austrian Empire, the village of Mezzocorona was called Mezzacorona.
Cantine argued that use of the mark was permitted by Article 11.2(c) – that the mark applied for was information that supplemented the description on the labelling and was a brand name in accordance with the conditions laid down in Article 40. Torres argued that the mark could not be a “brand name” in accordance with the meaning of that Article because, despite the fancy design and the replacing of the “o” with an “a”, the mark was really the name of a place, namely Mezzocorona. Torres argued that the mark did not satisfy the requirements of Article 40(1) as it was likely to cause confusion and to mislead the persons to whom it was addressed and further that the brand was identical to the description (the place name Mezzocorona) and was not entitled to the description thus falling foul of Article 40(2)(b).
The Court of Appeal held that the mark MEZZACORONA was a ‘brand name’. While the single letter difference made it confusingly similar to the place name, the word MEZZACORONA was not, as such, a place name. In the field of trade marks identity was strict. Given the visual differences as well as the different spelling, there was no identity for trade mark purposes. This identity test applied equally to the relevant articles of the regulation dealing with trade marks. The trade mark did not offend against Article 40 because it was not “identical to the description”. There was clear authority that trade marks containing a geographical reference were permissible provided that they did not deceive. It was not open to the court to find that a decision of the Eurpoean Court was wrong at least when there were no problems of conflicting decisions – Borie Manoux SARL v INPI  ETMR 29 ECJ followed.
Borie Manoux can be distinguished from the present case for several reasons. Firstly, the trade mark in that case, “Les Cadets d’Aquitaine” (Lamb from Aquitaine), does not include a geographical reference in relation to wine, but purely the name of an administrative region with no perceived link to wine. Secondly, Aquitaine itself is not a wine growing region or an appellation d’origine contrôlée (AOC – the French equivalent of the Italian DOC), although it has AOC within it (e.g. Bordeaux). Thirdly, the Regulation treats the name of a geographical unit which is smaller than the specified region (Article 11(2)(l)) in a different way from the name of a larger geographical unit of which the specified region is a part (Article 12(1)).