Defending trade marks from infringement is important for businesses seeking to protect their brands. Cristal Champagne recently went to lengths to do just that.
by Julie Brown
Julie Brown is an associate with Maclay Murray & Spens LLP and a member of the firm’s Intellectual Property & Technology team Julie.Brown@mms.co.uk
What was the Cristal case about?
Champagne Louis Roederer (CLR), the owner of the Cristal UK and Community Trade Marks, felt that Spanish cava brand ‘Cristalino’ was taking unfair advantage of its reputation, to the potential detriment of Cristal’s own sales. It took the owners of Cristalino to the High Court in order to try and stop them using the name.
CLR had a registered trade mark – what did it have to prove?
To establish that a likelihood of confusion would be caused, CLR had to prove that Cristal had a strong reputation in the UK. It showed the court vast references in the media to its champagne, including reports of celebrities buying and drinking Cristal and evidence of its use as a status symbol in US hip-hop and rap music. Survey evidence showed relatively strong recognition of the brand among the general public, despite only 40,000 bottles being sold in Britain annually.
Businesses should take care when launching a new product name or designing new packaging or logos, and always check whether any other organisations use similar names or themes.
The name Cristalino is slightly different – did that make Cristal’s claim harder?
CLR had to prove that there was a likelihood of confusion between the two products. It did so by demonstrating the similarities of the two marks, and the similarity of cava and champagne. Arguments were made surrounding the possibility of confusing the two names in a noisy nightclub, and the fact that Cristalino may have been taken for a ‘second wine’ or cheaper offshoot brand of Cristal.
The court considered the fact that the sign was printed on a convex surface of a bottle. Depending on how the Cristalino bottle was stacked on the shelf, the end of the name may be obscured, with only the ‘Cristal’ part of the name being displayed. This would also lead to confusion.
Did the court agree that Cristalino was unfairly damaging the Cristal brand?
Yes. It was held that any association with a cheap cava could dilute Cristal’s luxury image, leading to a reduction of sales, and that Cristalino took unfair advantage of the Cristal brand. Ultimately, the Cristalino trade mark was held to infringe the Cristal trade mark.
We don’t all have a celebrity image – but what can we learn from the case?
This case serves as a reminder to businesses to ensure that they are taking steps to protect their registered branding, and provides excellent examples of the various ways in which trade mark infringement can be established in court. Raising a successful action for infringement will prevent subsequent use of the mark by that infringer and will perhaps deter other would-be infringers. Additionally, a successful claim may result in the trade mark owner being awarded monetary compensation for the damage caused by the infringement.
Businesses should take care when launching a new product name or designing new packaging or logos, and always check whether any other organisations use similar names or themes. If a business owns a registered trade mark over the name, logo, shape or design of its packaging or product, any third party who deliberately incorporates similarities in their packaging or branding will risk infringing the trade mark owner’s rights.
