Roederer v J Garcia Carrion S.A. & Ors

Likelihood of confusion is assessed globally, considering the marks, goods, presentation and the average consumer’s imperfect recollection. Cava and champagne may be similar goods despite differences in price and prestige.

Reputation infringement may consist of dilution, tarnishment or unfair advantage. Intention to free-ride is unnecessary, but actual or likely change in consumer behaviour must be established. A small market share does not prevent a mark acquiring a strong reputation through longstanding and intensive use.

Champagne Louis Roederer owned UK and Community trade marks for CRISTAL. J Garcia Carrion S.A. marketed Spanish cava under CRISTALINO through Asda and Morrisons. The claims against the supermarkets had settled, and JGC ceased participating in the proceedings.

Roederer alleged infringement based on likelihood of confusion and on detriment to, or unfair advantage from, the reputation of CRISTAL. It also sought invalidity of JGC’s UK and Community registrations for CRISTALINO JAUME SERRA. The issues concerned similarity of the signs and goods, reputation, confusion, dilution, unfair advantage and the validity of JGC’s registrations.

1. Confusion infringement. The sign actually used was CRISTALINO, although JGC’s registered sign included JAUME SERRA. CRISTALINO was visually, aurally and conceptually similar to CRISTAL. Cava and champagne were similar goods because of their nature, purpose, use, competition and common trade channels. The presentation of the bottles reinforced the similarity.
2. The court assessed confusion globally through the eyes of the average consumer, allowing for imperfect recollection and the enhanced distinctive character of CRISTAL. The absence of actual confusion was not decisive because sales had stopped quickly and JGC had provided no disclosure. Consumers were likely to believe that CRISTALINO was a cheaper or second wine produced by Roederer. JGC therefore infringed under section 10(2) of the Trade Marks Act 1994 and article 9(1)(b) of the Community Trade Mark Regulation 207/2009.
3. Reputation infringement. CRISTAL had a strong UK reputation despite its small market share, including as a word mark used without Louis Roederer. CRISTALINO was likely to dilute the mark’s distinctive character and its association with luxury, exclusivity and prestige.
4. The court accepted that the relevant change in behaviour could be a reduction in CRISTAL sales or damage to its promotional and investment value. It also found that consumers chose CRISTALINO because of its association with CRISTAL, establishing unfair advantage. Intention to free-ride was unnecessary.
5. No finding of tarnishment was required. The use was without due cause on the pleaded case and infringed under section 10(3) and article 9(1)(c). The challenge to JGC’s registrations was upheld under section 47 and section 5(2) of the Trade Marks Act 1994, and article 53(1) and article 8(1)(b) of the Community Trade Mark Regulation 207/2009. JGC’s UK and Community registrations were declared invalid.