In the recent High Court decision of Roederer v J Garcia Carrion S.A. & Others  EWHC 2760 (Ch), Mrs Justice Rose shows she’s a lady au fait with the fizzy stuff.
Louis Roederer is a producer of the world famous Cristal champagne. It was historically commissioned to produce an exclusive wine in a flat bottomed, lead-crystal, clear bottle by the Tsar of Russia in 1876. Cristal (and its hefty price tag of £175, for the lesser vintages) has become known in popular culture from references in music by Tupac Shakur, Jay-Z and 50 Cent.
At the other end of the sparkling wine spectrum is cava, and particularly the J Garcia Carrion (JGC) cava, which was launched in the UK under the name Cristalino, and retailed in supermarkets for about £5 per bottle.
Roederer brought proceedings for infringement of its UK and CTM rights, even though JGC also owned UK and CTM rights for the mark CRISTALINO JAUME SERRA. In addition to trade mark infringement; Roederer also alleged tarnishment, unfair advantage and detriment to the distinctive character and repute of the CRISTAL mark.
The reputation of CRISTAL was cemented with sales showing that approximately 40,000 bottles were sold in the UK every year and by providing third party publications describing “the cult-vintage bubbly Cristal” and “the famous Cristal”. Rose J commented that in the rap world, to be seen drinking Cristal “signified that you had arrived and [sic] you were a ‘playa’. The practice has found its way to London — most notably in Mo’vida. It was from here that reports emerged of a French investment banker spending £41,000 on Cristal in one night”.
Survey evidence showed that 14% of unprompted respondents recognised the word CRISTAL as a brand of champagne. This was deemed to be significant considering the percentage of respondents who were likely to have ever bought or tasted the champagne.
Consequently, Rose J concluded that Cristal had a strong reputation in the UK.
Similarity of the marks
The court held that the marks were visually, phonetically and conceptually similar.
Likelihood of confusion
Supermarkets Asda and Morrisons had ceased selling the Cristalino after only a very short amount of time on the shelves. The Court held that the lack of actual confusion was not a problem, but also mentioned that indirect confusion could have arisen with the sale of more affordable ‘second wine’ from the champagne houses. Furthermore, the use in the UK of the composite mark with CRISTALINO being used in a larger font did give rise to a likelihood of confusion.
The Court decided that “where the prestige of a trade mark is fragile, the dilution of the CRISTAL mark by the use of the CRISTALINO mark on cheap sparkling wines will lead to a reduction in sales of CRISTAL”.
The Court did not go so far as to say that use of a similar trade mark on cava constituted tarnishment, as that could imply that cheaper products would always cause tarnishment in the eyes of the law. However, it did conclude that CRISTALINO was freeriding on the reputation of the CRISTAL brand. References were made to social media examples where consumers had bought CRISTALINO and when using the bottle jokingly made reference to CRISTAL. This therefore inferred that CRISTALINO was in effect a ‘poor man’s CRISTAL’. The Court held that there had been a change in the behaviour of cava buyers, who had opted for the CRISTALINO brand because they made an affinity with the CRISTAL brand.
It was held that CRISTALINO JAUME SERRA did infringe the CRISTAL marks. Yet there was a final but very important point in Rose J’s decision.
In addition to the claim of infringement and associated issues, Roederer also sought to invalidate JGC’s UK and Community CRISTALINO JAUME SERRA trade marks. At earlier stages of proceedings when the parties had been battling over who had the earlier rights, the principal hearing officer had rejected the invalidation request, but the issue was still included in the Reply to Defence and Counterclaim. JGC had known this and had been kept informed of the intention to pursue the invalidation, but had not entered any defence or indeed replied on this matter at all. Rose J commented that a defendant “should not be in a stronger position before the court because of their refusal to engage in the proceedings”. If she chose not to address the invalidity now, Roederer would have in any event been in a position to bring new proceedings, resulting in an unnecessary duplication of effort. As she found there was a likelihood of confusion, it was held that the proceedings could continue with regards to the invalidity of JGC’s marks. The Claimant was invited to draft an order giving effect to the judgment.
So, the moral of the story — ignoring or opting out of the litigation does not make it go away. Pay attention and clearly, don’t try to be something you’re not…