Miguel Torres SA v Cantine Mezzacorona SCARL
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Neuberger,Mr Justice Neuberger |
| Judgment Date | 26 March 2003 |
| Neutral Citation | [2003] EWHC 3359 (Ch) |
| Docket Number | Case No: CH/2003/APP/0026 |
| Court | Chancery Division |
| Date | 26 March 2003 |
[2003] EWHC 3359 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(From The Royal Courts of Justice)
Cardiff Civil Justice Centre
The Honourable Mr Justice Neuberger
Case No: CH/2003/APP/0026
In the Matter of Trade Mark Application No. 2029566
For "Mezzacorona" and Device in Class 33
In the Name of Cantine Mezzacorona S.C.A.R.L.
-and-
In the Matter of Opposition Thereto Under No. 46049
By Miguel Torres, S.A
-and-
In the Matter of the Appeal Thereto Under No. CH/2003/APP/0026
By the Opponent, Miguel Torres S.A
Mrs. Madeleine Heal (instructed by Messrs. Herbert Smith) for the Appellant.
Mr. Guy Tritton (instructed by Messrs. Laytons, of Guildford) for the Respondent
Hearing dates: 19 th, 20 th February 2003
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
This is an appeal brought by Miguel Torres S.A. ("the Opponent") against the decision of Mr George W. Salthouse ("the Hearing Officer"), acting for the Registrar and Comptroller General, dated 4 th February 2002. In his decision, the Hearing Officer rejected the Opponent's opposition to the application of Cantine Mezzacorona S.C.A.R.L. ("the Applicant") for the registration of the following mark ("the Mark in issue"):
The Italian words in the mark mean "Half Crown".
The application for registration was made by the Applicant on 7 th August 1995, pursuant to the provisions of the Trade Marks Act 1994 ("the 1994 Act"), in respect of "wines, spirits and liqueurs" in Class 33. It claimed an International priority date of 21 st July 1995, based on a registration in Italy. The Opponent filed notice of opposition on 6 th December 1996, which was subsequently amended. The Hearing Officer had the following sources of evidence. Two declarations on behalf the Opponent in support of its opposition (dated 22 nd July and 12 th August 1997), six declarations on behalf of the Applicant in support of its application (one dated 24 th February, two dated 4 th March, and three dated 11 th March, 1998), a further declaration from the Opponent (dated 13 th November 1998) and three further declarations from the Applicant (dated 18 th February and 8 th November 2000).
The grounds of opposition raised by the Opponent before the Hearing Officer were based on sections 1(1) and 3(1), section 3(3), section 3(4), section 3(6), section 5(2) and section 5(4) of the 1994 Act. All references to sections hereafter are to sections of the 1994 Act.
At the hearing, which took place on 17 th August 2001, the Applicant was represented by Mr Guy Tritton, and the Opponent by Mrs Madeleine Heal, each of whom appears on this appeal. The upshot of the hearing, as I have indicated, was that the Hearing Officer published his decision, in which he rejected all the grounds of opposition, and accordingly acceded to the Applicant's application to register the Mark in question.
The Opponent appealed that decision, and the appeal initially came on for hearing before Mr Simon Thorley QC, as the appointed person, on 18 th December 2002. He decided to refer the appeal to the High Court, pursuant to the provisions of section 76(3), and it is on that basis that the appeal now comes before me.
On this appeal, the Opponent seeks to maintain most of the grounds of opposition, which were advanced on its behalf, before the Hearing Officer. The grounds of opposition raised in Mrs Heal's skeleton argument and which fall to be considered on this appeal are based on sections 5(2)(b), 5(4)(a), 3(3)(b), 3(4) and 3(6).
The most, difficult and relatively novel ground raised is that under section 3(4). The appeal is further complicated by the fact that the Opponent wishes to put in further evidence to assist its case in relation to some of the grounds of opposition on this appeal.
The next part of this judgment sets out the basic relevant facts. I shall then give a brief summary of the issues raised by the various grounds of opposition. Next, I shall deal with the procedural aspects, including the application to adduce new evidence. Finally, I shall discuss each of the grounds of opposition, other than that raised under section 3(3)(b).
A summary of the basic facts
The Opponent is a company which produces wines, spirits and liqueurs in Spain, Chile and California. It claims to be the twelfth largest producer and exporter of Spanish wines. Its evidence shows that some of the labels on its bottles of wine bear distinctive "crowns" together with the marks CORONAS and GRAN CORONAS. These labels all bear the name TORRES, with the addition of the earlier word MIGUEL, in the case of Chilean wines, and MARIMAR, in the case of the Californian wines.
The Opponent's evidence included the sales figures in the UK for its goods bearing the mark CORONAS in its various forms for the years 1991 to 1996 inclusive. The Opponent's case has been that it has used its marks in the United Kingdom since 1965.
The Applicant is a wine growers co-operative producing a number or red and white wines from different types of grape. Its registered office is in Mezzocorona in the Trento region, which is in north-eastern Italy. The population of Mezzocorona is in the region of 5,000.
The Applicant is one of the largest wine growing co-operatives in the Trentino area, which is one of the five or six wine growing areas of north east central Italy, perhaps the most famous other wine growing area in the region is Alto Adige. According to a map which was produced during the hearing of the appeal without objection, the Trentino area is divided up into three or four uncontiguous parcels, and Mezzocorona is on the edge of one of those parcels.
According to its evidence, the Applicant's choice of name, "Cantine Mezzacorona" reflected the fact that, between 1889 and 1918, when the region was within the Austrian Empire, the village of Mezzocorona was called Mezzacorona. The Applicant's evidence also stated that the Mark in issue had been used since 1983, and had been registered in many countries, including Italy. It appears that the Applicant started exporting wine to the UK in 1988, using the mark Cantine Mezzacorona.
Outline of the issues
Section 5(2)(b) prohibits the registration of a trade mark if:
"It is similar to an earlier trade mark and to be registered for goods or services identical with or similar to those for which the earlier mark is protected [and]
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."
The Opponent's case under this section is that the Mark in issue is, and is to be, used on and in connection with wine, and that such use would lead to "a [sufficient] likelihood of confusion on the part of the public", for the purposes of section 5(2), with the Opponent's "earlier trade mark[s]", namely the various CORONAS Marks.
The Hearing Officer accepted, in paragraph 48 of his decision, that "the Applicant's specification encompasses the goods for which the Opponent's marks are registered", and that, accordingly, "for the purposes of the comparison the goods must therefore be regarded as identical". However, he concluded in paragraph 50 that "there was no likelihood of confusion at 7 th August 1995".
The essence of the Opponent's case on this issue is that the Hearing Officer failed to take into account that the Opponent's marks were particularly well known. The Opponent seeks to put in further evidence, not before the Hearing Officer, in order to provide, or at least improve, the factual basis for this contention.
I turn to the Opponent's argument under section 5(4)(a), which provides that:
"A trade mark shall not be registered if… its use… is liable to be prevented… by virtue of any rule of law (in particular the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade…"
Essentially for the reasons that he rejected the Opponent's case under section 5(2)(b), namely that "the Opponent's marks… are not similar to the Applicant's mark", the Hearing Officer concluded that "the lack of similarity will prevent the public believing that the products of the Applicant originate from the Opponent" (paragraph 55). Not surprisingly, the Opponent's arguments on its appeal under section 5(4)(a) are very similar to the arguments it raises under section 5(2)(b). On this, the main, reason for rejecting this ground of opposition, the Opponent contends that the Hearing Officer ignored, or considerably underestimated, the reputation of the Opponent's marks, and seeks to put in the further evidence, to which I have referred, to bolster its case in that connection.
The Hearing Officer rejected the Opponent's case on section 5(4)(a) on the additional ground that the Applicant had established "a degree of antecedent use and rights in the name MEZZACORONA in the UK going back to 1988", as opposed to the Opponent's first use of its trade marks, which he found to have been in 1991 – see paragraphs 56 to 58. In relation to the argument under section 5(4)(a), the Opponent contends that this was a wrong finding on the evidence then available to the Hearing Officer, but it also seeks to put in further evidence on this appeal to support its case that its use of the marks started in 1965. The Opponent also contends that this error on the part of the Hearing Officer contributed to his reaching a wrong conclusion on the argument based on section 5(2)(b).
The next ground of opposition I should mention is under section 3(3)(b), which prohibits registration of a trade mark if:
"It...
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- Miguel Torres SA v Cantine Mezzacorona SCARL
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Decision Nº O/065/05 from Intellectual Property Office - (Trade market), 14 March 2005
...(for instance as to the nature, quality or geographical origin of the goods or service)”. In Miguel Torres SA v Cantine Mezzacorona SCARL [2004] RPC 25 Neuberger J stated: “It seems to me clear that s.3(3)(b) is, as a matter of ordinary language, plainly concerned with actual or likely dece......