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IP & IT analysis: What does Champagne Louis Roederer v J Garcia Carrion S tell us about survey evidence, proving reputation and likelihood of confusion in trade mark infringement cases?
Champagne Louis Roederer (a company incorporated under the laws of France) v J Garcia Carrion S A (a company incorporated under the laws of Spain) and others  EWHC 2760 (Ch),  All ER (D) 47 (Oct)
What is the case about?
Louis Roederer (LR) produces various brands of champagne, the best known is ‘Cristal’. The mark CRISTAL is registered to LR in the UK in respect of champagne wines and as a Community trade mark (CTM) in respect of wines, sparkling wines, wines of French origin with the designation ‘champagne’. J Garcia Carrion (JGC) is a large producer of sparkling wine and also registered proprietor of a UK trade mark and CTM for CRISTALINO JAUME SERRA in respect of sparkling wines and wines.
LR claimed that the sales of CRISTALINO sparkling wine in UK supermarkets infringed LR’s marks under s 10(2) and s 10(3) of the Trade Marks Act 1994 (TMA 1994), and equivalent provisions under art 9(1)(b) and art 9(1)(c) of the Community Trade Mark Regulation (EU) 207/2009 (CTMR). This claim was also issued against Morrisons and Asda who settled with LR and subsequently withdrew sales under the terms of a Tomlin Order.
Given that the defendant ceased to participate in proceedings over two years ago, why did this matter go all the way to trial?
It was certainly an option for LR to apply for judgment in default and they would most likely have succeeded given JGC’s conduct. JGC did not respond to various court orders nor provide any disclosure or other evidence. In fact JGC ceased to instruct solicitors on this dispute more than two years prior to the trial. However, this case is part of wider proceedings in multiple jurisdictions—LR wished to proceed to trial in order to establish the merits of their claim. The High Court hearing afforded LR an ideal opportunity to test evidence and arguments.
In the context of increased judicial hostility to survey evidence, how did the court view the two surveys carried out on behalf of LR?
LR commissioned surveys in this case in order to establish that the mark CRISTAL has a reputation in the UK, key to their claim for infringement under CTMR art 9(1)(c) but also pertinent to their claim under art 9(1)(b) because the more distinctive the mark, the stronger the scope of protection.
In Interflora II (Interflora v Marks and Spencer  EWCA Civ 319,  All ER (D) 14 (Apr)) the Court of Appeal ruled that courts should not allow survey evidence in trade mark infringement cases unless:
At trial, the court considered two separate surveys. In the first survey participants were asked about their champagne/sparkling wine shopping habits and then, after being shown a card with ‘Cristal’ printed on it, were asked if they recognised the word and, if so, what it meant to them. In the second survey participants were simply shown the card which read ‘Cristal’ and asked to expand on what they saw. The court was impressed by the results of the second survey which yielded a 14% brand recognition. Although this result appears low, the court took into account the fact that the word had no connection with champagne but could be understood as the word ‘crystal’ relating to rocks, glassware or a female name. Further, it was significant that most survey participants were unlikely to have tasted or bought the champagne.
In the court’s analysis, the survey results, together with multiple samples of press coverage, awards, commentary on social media and even pop song lyrics created compelling evidence of CRISTAL’s reputation.
Were the ‘JAUME SERRA’ elements of the CRISTALINO JAUME SERRA mark deemed significant for the purposes of establishing confusion?
In their defence and counterclaim, JGC argued that they did not use the sign CRISTALINO in isolation but rather CRISTALINO JAUME SERRA. The court dismissed this claim, finding multiple instances such as bottle labels, bottle necks where the CRISTALINO part of JGC’s mark either appeared on its own or was emphasised in some way—eg underlined or in a larger font than the JAUME SERRA element. On this basis, the court was satisfied that it was comparing the marks CRISTAL and CRISTALINO.
What was the court’s finding on trade mark infringement?
The court found that JCG infringed LR’s marks on the following bases:
What can trade mark lawyers take away from this case?
This case demonstrates that there is still a role for survey evidence in trade mark litigation though there is a question over whether the court would have reached the same conclusion in the absence of survey evidence (also see Enterprise Holdings v Europcar Group UK  EWHC 17 (Ch),  All ER (D) 63 (Jan)). Litigants should remain cautious of survey evidence, always seek the court’s permission and ensure that methodology is transparent and complies with judicial guidance.
This case also emphasises that claimants do not need to prove real world confusion. This is particularly pertinent in the high-end luxury goods sector, where goods typically have a limited circulation. In fact, in this case counsel for the claimant pointed out that any evidence of real world confusion was likely to be in the possession of JGC who sold far more products.
While it would have been interesting to see what evidence, disclosure and arguments JGC would have put forward had they stuck with the case until trial, it is difficult to imagine the court coming to a different conclusion on the facts of this case.
Jessica Stretch, solicitor in the Lexis®PSL IP & IT team.
This article is republished with kind permission of WIPIT’s sister site, Lexis®PSL IP & IT. For a free trial click here.
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