Trade mark decision

BL Number

O/049/02

Decision date

4 February 2002

Hearing officer

Mr G Salthouse

Mark

MEZZACORONA

Classes

33

Applicant

Cantine Mezzacorona SCARL

Opponent

Miguel Torres S.A.

Opposition

Sections 1(1), 3(1), 3(3)(b); 3(4); 3(6); 5(2)(b) & 5(4)(a)

Result

Section 3(1): - Opposition failed.

Section 3(3)(b): - Opposition failed.

Section 3(4): - Opposition failed.

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

• Geographical indications : Community Law

Summary

The opposition was based on their own TORRES CORONAS, CORONAS and CORONA marks, both registered and unregistered, and on marks used by other proprietors; also on the fact that MEZZOCORONA is a wine making town in Italy, and the mark applied for was therefore deceptive as to geographical origin.

The Hearing Officer dealt with the matter first under Section 5(2). The goods were identical, but after comparing the mark in suit with each of the marks cited by the opponents the Hearing Officer concluded that there was no likelihood of confusion. The Section 5(2)(b) therefore failed.

The Hearing Officer then turned to consider the matter under Section 5(4)(a). However, the lack of similarity in the marks effectively decided this matter also. Nevertheless, he went on to find that even had the opponents presented an arguable case for passing off at the relevant date on the basis of their own goodwill, the case was bound to fail once the applicants’ own use was factored in, because that use was plainly not a mis-representation at that date.

The objections under Sections 1(1) and 3(1) were dismissed as being plainly based on relative considerations, ie the existence of other marks.

The Hearing Officer then considered the matter under Section 3(3), whereby it was contended that the mark was deceptive as to geographical origin. The Hearing Officer noted that the winemaking town in Italy cited by the opponents was MEZZOCORONA, (tho’ it had borne the name MEZZACORONA briefly, during a period of Austrian rule), and the D.O.C. district in which it was situated was "TRENTINO". In the event he concluded that the UK public would not be deceived and the Section 3(3) ground failed also.

Neither could he find that use of the word MEZZACORONA was liable to be prevented under Community Law, and the Section 3(4) ground therefore failed.

Finally, the Hearing Officer considered the matter under Section 3(6). He first refused an application to amend the original ground pleaded, so as to refer to EC Regulation 2392/89; but he did go on to state that in any event the opponents had not shown that the application offended against that regulation. Under the ground as originally pleaded, the opponents had merely alleged that the applicants had known of their objections but had persisted with their application. This was not sufficient to sustain an objection under Section 3(6).