"Cristal" clear: CRISTAL champagne trade mark found by the UK courts to be infringed by CRISTALINO

Roederer was a French company which produced and sold champagne under its CRISTAL brand. JGC claimed to be the largest Spanish producer of wines in Spain and the EU. Roederer claimed that JGC's importation into and sale in the UK of its CRISTALINO Brut, CRISTALINO Rosé and CRISTALINO Sparkling Reserva Cava products infringed its UK and Community marks under ss.10(2) and 10(3) of the Trade Marks Act 1994 (UK) and arts.9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation.  JGC had contested the complaint up until it served an Amended Defence and Counterclaim in 2011. However, it had subsequently ceased to instruct lawyers within the UK to conduct the proceedings on its behalf, had not responded to various directions orders made by the court, and was not represented at trial.

Taking into account the remarkable press coverage given to CRISTAL, survey evidence adduced by Roederer as to the reputation of CRISTAL amongst the British public, awards given to CRISTAL champagne, and other references including in social media, the judge found that CRISTAL enjoyed a clear reputation as a top quality champagne available only to the wealthy and enjoyed by those who appreciated the finer things in life, or who aspired to be regarded as such a person. 

Section 10(2)/Article 9(1)(b)

Given the prominence of the CRISTALINO element on JGC's bottles, the judge rejected JGC's defence that the sign it was using was CRISTALINO JAUME SERRA. She went on to find that CRISTALINO was similar to CRISTAL and that cava sold by JGC under the CRISTALINO sign was similar to champagne. Although Roederer did not put forward any evidence of actual confusion, the judge did not find this surprising given that JGC had stopped selling CRISTALINO cava in the UK very shortly after it had started, following receipt of a written complaint by Roederer. In addition, instances of confusion would have been more likely to emerge from JGC's disclosure, which it had not provided.

The judge found a likelihood of confusion, particularly on account of evidence of the 'second wine' practice in the wine industry whereby a second wine was sold under a renowned estate name, often using a name which was a diminutive of the estate's premier wine. There was therefore a likelihood that the average consumer would think that JGC's Spanish cava was produced by Roederer.  

Section 10(3)/Article 9(1)(c)

The judge also found infringement under s.10(3) and art.9(1)(c). She held that the use of CRISTALINO took unfair advantage of the CRISTAL marks, would result in detriment to the distinctiveness of those marks and would damage the reputation of the marks by associating CRISTAL with cheap cava rather than with exclusivity, luxury and prestige. This would lead to a reduction in sales of CRISTAL (particularly due to reduced demand for use of CRISTAL in marketing initiatives and sponsorship deals with prestigious venues), and would have an adverse effect on the origin, advertising/communication, and investment functions of the CRISTAL marks.

Invalidity of JGC's UK and Community marks

The judge accepted Roederer's argument that JGC should not be in a stronger position before the court because of its refusal to engage in the proceedings. She therefore concluded that it was not inappropriate to consider the validity of JGC's marks in its absence, particularly given that it would otherwise be open to Roederer to bring separate invalidity proceedings leading to a duplication of effort. In light of her findings above, and given the use which JGC had made of its CRITALINO JAUME SERRA marks to date, the judge upheld Roederer's invalidity claim pursuant to s.5(2) of the Trade Marks Act 1994.