The mark CRISTALINO, as used on sparkling wine (cava) produced by a Spanish winemaker and imported into the United States by a consortium of Spanish wineries, was likely to be confused with a French winemaker's CRISTAL marks for champagne, the federal district court in Minneapolis has determined. The Spanish winery was permanently enjoined from further infringing uses of its mark.

Strength of CRISTAL Marks

The strength of the CRISTAL marks weighed in favor of a likelihood of confusion finding, the court said. The common-law mark CRISTAL was suggestive, not descriptive. CRISTAL translated from French as "crystal" or "quartz," and champagne was neither crystal nor quartz. Competitors did not need to use the word "CRISTAL" to describe their sparkling wines.

The registered mark CRISTAL CHAMPAGNE mark was conceptually weak because it was descriptive. However, like the common-law CRISTAL mark, it was commercially strong, in the court's opinion. The CRISTAL marks were well-known among the general public. The French winery had used CRISTAL in the United States to identify its champagne since at least 1937. Numerous reviews in wine publications recognized the quality of its champagne, and demand for CRISTAL champagne had always exceeded supply. CRISTAL champagne was shown frequently in television shows and movies and was commonly mentioned in popular novels and songs.

Competitive Proximity

Although the parties' products did not compete directly for sales --and the Spanish producer's cava was sold for considerably lower prices than the high-end CRISTAL champagne --there was similarity in their sales outlets, trade channels, and customers, the court noted. Sales and distribution channels of CRISTAL champagne and CRISTALINO cava overlapped, and the publications in which their advertising and reviews appeared were targeted toward the same educated, relatively affluent consumers.

It would be reasonable for consumers to believe CRISTAL champagne and CRISTALINO cava were affiliated, the court said. It was common for wineries that produced prestige wines to expand their product lines to include lower-priced products.

Similarity of Marks

The marks were similar, the court determined. Both parties' marks were dominated by "CRISTAL." "CRISTAL" did not have a meaning in English other than to identify CRISTAL champagne or as a proper name, which increased the effect of the similarity of the marks.

The suffix "INO" was likely to suggest to consumers that "CRISTALINO" was a diminutive of the root word "CRISTAL." Media articles and Internet postings referred to CRISTALINO cava as "CRISTAL champagne's younger brother" and suggested that consumers purchase CRISTALINO cava instead of CRISTAL champagne, which further indicated that consumers would associate the marks with one another.

The parties' sold their products in bottles with the same shape, with labels that had several similar design elements, the court added.

Survey Evidence

Consumer survey evidence slightly favored a finding of likelihood of confusion. A survey presented by the French winery was given diminished weight by the court because of flaws in the survey universe and methodology. However, verbatim accounts of respondents included in the survey report indicated that a significant percentage of consumers aware of CRISTAL champagne were confused as to brand, source, sponsorship, or permission with respect to CRISTALLINO cava and CRISTAL champagne, based on the products' names and labeling.

Dilution

The French champagne maker could not pursue a claim that its CRISTAL marks were diluted by the CRISTALINO brand, the court held. The French winery failed to establish that the CRISTAL marks had achieved fame in the United States prior to the time the Spanish winery began using CRISTALINO in U.S. commerce. Prior to that time, CRISTAL had, at most, "niche" fame, which could not support a dilution claim. With respect to the duration, extent, and geographic reach of advertising and publicity of the CRISTAL marks, the advertising of CRISTAL champagne before 1993 was minimal and primarily reached those in the wine industry or related industries, rather than the general public.

Permanent Injunction

The Spanish winemaker was permanently barred from using CRISTALINO for sparkling wine in a manner that was likely to cause confusion with the French winery's CRISTAL marks. The reputation of CRISTAL champagne as a high-quality product was unquestionable, the court said. Thus, the French winery's inability to control the quality of CRISTALINO cava constituted irreparable injury. Monetary damages would be inadequate to compensate the French winery for the harm to its goodwill and reputation.

It was unnecessary to completely bar use of the word "CRISTALINO" to prevent confusion, the court said. The Spanish winery could use the term "CRISTALINO" for cava or sparkling wine as part of the phrase "JAUME SERRA CRISTALINO," as long as it was accompanied by a prominent disclaimer stating that the wine was not affiliated with or connected to CRISTAL champagne or the French winery. The mark also had to be used on labels with fonts and other design elements that were dissimilar to CRISTAL's labels.

Champagne Louis Roederer, D Minn., ¶61,681.