Thursday, July 29, 2010

On remand, CRISTAL champagne maker seals victory against CRISTALINO sparkling wine

Cristal Champagne

In 2006, Champagne Louis Roederer, the company which makes CRISTAL CHAMPAGNE, sued J. Garcia Carrion, S.A. (“Carrion”), maker of a sparkling wine sold under the mark CRISTALINO, for trademark infringement. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., Case No 06-cv-00213 (D. Minn). The lower court originally barred Roederer from pursuing its trademark infringement claims on the basis of laches; however, the Eighth Circuit reversed that decision and remanded the case for further proceedings. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., et al., No. 08-2907 (8th Cir. June 24, 2009) (previous blog post here).

Cristalino Cava

On remand, a trial was held in February 2010. On July 27, 2010, the U.S. District Court for the District of Minnesota filed under seal Findings of Fact and Conclusions of Law (possibly unsealed at a later date) and based on such findings and conclusions, issued a permanent injunction against Carrion which prohibited Carrion from using the CRISTALINO mark in connection with the sale of sparkling wine subject to several explicit exceptions. See Court’s order here.

First, Carrion can use CRISTALINO but only as part of the phrase “JAUME SERRA CRISTALINO” and must include a prominent disclaimer stating “JAUME SERRA CRISTALINO is not affiliated with, sponsored by, approved by, endorsed by, or in any way connected to Louis Roederer’s CRISTAL® champagne or Louis Roederer.”

Second, the font used by Carrion for the phrase “JAUME SERRA CRISTALINO” must be dissimilar to the Roman serif font used for the word “CRISTAL” by Roederer and must be entirely the same font type and size with JAUME SERRA displayed in close proximity to CRISTALINO.

Third, when Carrion uses “JAUME SERRA CRISTALINO” on bottles of cava, the phrase is only to appear on labels having a background color “other than gold if the cava is a brut, dry, extra-dry, or semi-dry and other than a pink-hued copper if the cava is a rosé.” [ed—Hmmm, that's pretty specific.]

Finally, the court determined that Carrion can sell its existing inventory of CRISTALINO cava which are already labeled, but otherwise, must immediately destroy all labels, signs, prints, packages, wrappers, receptacles, and advertisements in its possession bearing the mark CRISTALINO.

No indication of any award for damages or attorneys fees.

News coverage on the decision from Businessweek.

No comments: