High Court ruling has Champagne Louis Roederer reaching for the CRISTAL
The High Court has given its decision in a trademark dispute between the producer of CRISTAL champagne, which is popular amongst the Hip-Hop and Hollywood elite, and a lesser-known producer of inexpensive CRISTALINO cava.
In Champagne Louis Roederer v J Garcia Carrion SA ( EWHC 2760 (Ch)), the High Court has ruled that Champagne Louis Roederer’s UK and Community trademark (CTM) registrations for CRISTAL were infringed by J Garcia Carrion (JGC)’s importation into and sale in the United Kingdom of cava under the sign CRISTALINO.
The High Court also declared JCG’s UK and CTM registrations for CRISTALINO JAUME SERRA invalid on the basis of Louis Roederer’s earlier registrations for CRISTAL.
Louis Roederer is a French producer of champagne and its flagship brand is CRISTAL. In order to protect the CRISTAL brand, Louis Roederer has registered CRISTAL as a UK trademark for champagne and as a CTM for sparkling wine.
JGC is a Spanish producer and seller of wine and produces a cava that it markets under the name CRISTALINO. In addition, JCG had registered CRISTALINO JAUME SERRA as a UK trademark and as a CTM for, amongst other things, sparkling wine.
Louis Roederer sued JGC in the High Court for infringement of its CRISTAL trademarks. Louis Roederer also sought a declaration of invalidity against JCG’s trademark registrations.
The High Court ruled in Louis Roederer’s favour on both the infringement and invalidity claims.
Having found that JGC's use of the registered mark CRISTALINO JAUME SERRA emphasised the 'cristalino' element, the High Court held that JGC had infringed Roederer’s CRISTAL marks as:
the CRISTAL mark and the sign CRISTALINO are similar and the goods covered by the CRISTAL mark, namely champagne/sparkling wine, are similar to the goods marketed under the sign CRISTALINO, namely cava, creating a likelihood of confusion on the part of the alcohol buying public; and
the CRISTAL mark had a strong reputation in the UK and use of the sign CRISTALINO for cava took unfair advantage of, and was detrimental to, the distinctive character of the CRISTAL mark.
Having found that there was confusion-based infringement, the High Court also granted the declaration of invalidity against JCG’s trademark registrations.
On this point, it is notable that Louis Roederer had previously been unsuccessful in opposition proceedings against JGC’s UK registration. In Champagne Louis Roederer v J Garcia Carrion SA (O-150-09, June 1 2009), the hearing officer at the UK IPO, having said that he could not restrict his analysis to the marks CRISTAL and CRISTALINO, had held that there was no likelihood of confusion between the marks CRISTAL and CRISTALINO JAUME SERRA. In explaining its reasoning for reaching a different conclusion to the hearing officer, the High Court held that it was significant that JGC’s use of the mark CRISTALINO JAUME SERRA had emphasised the 'cristalino' element.
The ruling in relation to reputation-based infringement will be welcomed, in particular, by luxury brand owners. While it appears that Louis Roederer submitted no evidence to show that JGC’s use of the sign CRISTALINO for cava may lead to a change in the economic behaviour of consumers, the High Court was content to find that use of the sign CRISTALINO for “cheap” cava was likely to dilute the association of the CRISTAL mark in the public’s mind with the “exclusivity, luxury and prestige” and the strong reputation enjoyed by the CRISTAL mark in the United Kingdom.
The ruling in relation to invalidity confirms that a brand owner’s prospects of success in opposition or invalidity proceedings will be higher if the owner of a later filed mark is using the mark in a manner that emphasises part of the mark in such a way that it increases the risk of a likelihood of confusion on the part of the relevant public.
Martin Henshall and Nick Bolter, Cooley (UK) LLP, London
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