Thursday, June 25, 2009

Eighth Circuit Overturns Lower Court’s Laches Decision in CRISTAL Trademark Infringement Lawsuit

The relatively new-on-the-block Minnesota Law, Technology & Intellectual Property Blog reports on the decision by the Eighth Circuit Court of Appeals overturning a lower court’s decision dismissing a trademark infringement lawsuit on the basis of laches. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., et al., No. 08-2907 (8th Cir. June 24, 2009).

Cristal Champagne

Champagne Louis Roederer, maker of CRISTAL CHAMPAGNE, sued J. Garcia Carrion, S.A., maker of a sparkling wine sold under the mark CRISTALINO, for trademark infringement. The lower court dismissed the lawsuit on the basis that Roederer had constructive notice of Carrion’s use of the CRISTALINO mark as early as 1995 and the action was therefore barred by the doctrine of laches.

Cristalino Cava

The Court of Appeals found that the district court had not done a meaningful analysis of the issue of progressive encroachment to determine if 1995 was really the date when Carrion’s use became actionable infringement for purposes of applying the doctrine of laches.

The Court further noted that Carrion was certainly on notice regarding Roederer’s objection to Carrion’s use of the CRISTALINO mark. Roederer had opposed several trademark registration applications filed by Carrion in Spain, the U.S. and Columbia in the early and late 1990s -- long before Carrion has made a significant investment in improving a particular production plant in 2003.

Finally, the Court found that the district court had erred in finding that Carrion would be prejudiced by this delay if Roederer’s lawsuit proceeded. Carrion’s investment in improving its production plant did not appear to be so related to the CRISTALINO brand (only 9% of the plant’s output) that Carrion would not have otherwise made it without the CRISTALINO brand. Thus, Carrion had failed to show that it suffered undue prejudice as a result of Roederer's delay in bringing suit. The Court found that this alone was sufficient to bar Carrion’s use of the laches defense.

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