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
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Rose |
| Judgment Date | 06 October 2015 |
| Neutral Citation | [2015] EWHC 2760 (Ch) |
| Date | 06 October 2015 |
| Court | Chancery Division |
| Docket Number | Case No: HC-2010-000030 |
[2015] EWHC 2760 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
Mrs Justice Rose
Case No: HC-2010-000030
Simon Malynicz (instructed by Reynolds Porter Chamberlain LLP) for the Claimant
The Defendants did not appear and were not represented
Hearing dates: 8 and 9 July 2015
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
1. The Claimant ('Roederer') is a French company which produces champagne sold under a variety of brand names. The brand to which this dispute relates is CRISTAL champagne, said by Roederer to be one of the best-known prestige cuvées in the world. Roederer is the registered owner of a UK trade mark 1368211 for the word CRISTAL which is registered with effect from 22 December 1988 in respect of champagne wines. It is also the owner of a Community trade mark ('CTM') number 008513913 for the word CRISTAL registered with effect from 27 August 2009 in respect of wines, sparkling wines, wines of French origin with the designation of origin 'Champagne'. The scope of the goods covered by the registration of the mark is thus wider for the CTM than for the UK trade mark.
2. The First Defendant ('JGC') is a Spanish company which makes and sells a range of wines including sparkling wines. The global turnover of JGC in 2013 amounted to €745 million. It claims to be the largest Spanish producer of wines in both Spain and the EU as well as being the fourth largest producer of wine in the world. It sold 40 million cases of wine in 2013 and made exports of about €400 million in 2014. One of its products is a cava sparkling wine made in Spain. JGC is the registered proprietor of UK trade mark registration number 2425725 registered in respect of the sign "CRISTALINO JAUME SERRA" in class 33 in relation to, amongst other things, sparkling wines and wines. This mark was applied for on 28 June 2006 and registered on 31 July 2009. JGC is also the registered proprietor of the CTM registration number 5178538 applied for on 4 July 2006 and registered on 14 August 2009 in respect of the sign "CRISTALINO JAUME SERRA".
3. The Second and Third Defendants (Asda and Morrisons respectively) are well known supermarket chains operating in the United Kingdom.
4. Roederer alleges in these proceedings that the Defendants have infringed Roederer's UK and Community trade marks by importing into and selling in the United Kingdom its Spanish sparkling wine under the sign 'CRISTALINO'. The product comes in three forms, CRISTALINO Brut, CRISTALINO Rosé and CRISTALINO Sparkling Reserva Cava. JGC has sold the products to Asda and Morrisons, amongst others. Bottles of Cristalino cava sell for about £5 each. It is alleged that this amounts to an infringement under both section 10(2) and 10(3) of the Trade Marks Act 1994, so far as the UK mark is concerned and under article 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation ( Council Regulation 207/2009, OJ L78 28. 3.2009 p. 1) ('CTMR') so far as the Community trade mark is concerned.
The background
5. The claim was issued on 19 March 2010. The claims against Asda and Morrisons have been settled; Tomlin orders were made in respect of Morrisons on 28 April 2011 and in respect of Asda on 14 October 2011. Proceedings against them are therefore stayed on the basis, as I understand it, that they will no longer stock JGC's CRISTALINO wine. The supermarkets have played no further part in the case.
6. JGC initially contested the claim up to the point when they served an Amended Defence and Counterclaim on 7 February 2011. In that Defence, JGC admits that Roederer produces champagne under the 'composite sign' 'LOUIS ROEDERER CRISTAL CHAMPAGNE' and that that product has been sold in the UK. But the Claimant is put to proof as to the volume and duration of sales in the UK and of any use by them of the CRISTAL mark other than as part of the composite sign. It is admitted that JGC makes and sells cava and that it intends to use its mark, that is CRISTALINO JAUME SERRA, in relation to its cava.
7. In early 2013 JGC ceased to instruct solicitors within the jurisdiction to conduct the proceedings on their behalf. They have not responded to the various directions orders made by the court; they have not provided any disclosure or put in any evidence in support of their case. It would have been open to Roederer to apply for a default judgment but because these proceedings are part of a much wider battle between Roederer and JGC in many jurisdictions across the world, Roederer wanted to obtain a judgment on the merits of their claim. At a pre-trial review hearing on 16 June 2015, I made an order that unless by a specified date JGC indicated an intention to cross-examine Roederer's witnesses, those witnesses' evidence would be treated as having been confirmed on oath and the witness did not have to attend trial. The exception to this was Frédéric Rouzaud, the chief executive of Roederer and the sixth generation of the family to own and manage the champagne house. Nothing was heard from JGC. A trial took place over two days in which I was taken carefully through the evidence put forward by Roederer and detailed submissions were made on the law by Mr Malynicz on behalf of Roederer. M Rouzaud did attend trial and confirmed his evidence on oath in the witness box.
8. The other witnesses of fact for Roederer were:
i) Michel Janneau who is Executive Vice President of Roederer and in charge of Communications and Marketing;
ii) Mark Bingley who is the Fine Wine Director of Maisons Marques et Domaines Limited. That company is a wholly owned subsidiary of Roederer and their sole distributor of CRISTAL champagne in the UK. He holds the qualification of Master of Wine from the Institute of Masters of Wine. His evidence describes the UK champagne market;
iii) Christophe Pelèse who is a partner at the French law firm Ernest Gutmann-Yves Plasseraud SAS in Paris. His firm specialises in intellectual property disputes and he is a trade mark attorney. His firm has managed the Roederer portfolio of trade marks since 1985. That portfolio now includes around 200 marks in about 110 jurisdictions;
iv) Georgia Davis who is a legal director at the London firm of Reynolds Porter Chamberlain LLP. Her evidence summarises the procedural history of the proceedings.
9. Roederer also relied on the expert report of Philip Malivoire, director of Philip Malivoire Ltd. His evidence described the survey that was carried out by Roederer to establish the extent of brand recognition among the alcohol buying public of the CRISTAL brand.
10. The following findings about the history and current position of the Roederer champagne house and the CRISTAL cuvée are mostly taken from the evidence of M. Rouzaud and M. Janneau.
11. The Roederer champagne house traces its origins back to 1776 and was named 'Louis Roederer' in 1833. It is one of the small number of 'Grand Marques' or 'prestige cuvées' French champagne houses which produce the best champagne in France. It has always been and remains a family owned and run company. Roederer produces a range of vintage and non-vintage champagnes from its headquarters at Reims. They bear various names which do not use the CRISTAL mark. Non-vintage champagnes are called Brut Premier or Carte Blanche and the vintage champagnes bear the name Vintage, Rosé and Blanc de Blancs. Roederer also produces a range of sparkling wines in the Anderson Valley of California. These are not labelled as champagne but are marketed under the name 'Roederer Estate'.
12. M Rouzaud explains that Roederer created the first 'Cuvée de Prestige' at the request of the cellar master of Tsar Nicholas II of Russia in about 1876. Roederer had been the official wine supplier to the Imperial Court of Russia and was invited to produce something special for the Tsar himself. M. Rouzaud's evidence is as follows (referring to Roederer as CLR):
"22. As the political situation in Russia during his rule was unstable, the Tsar feared that assassination attempts would be made on his life. The Tsar noted that the design of a standard Champagne bottle (which was often made of green glass) made the colour and effervescence of the Champagne invisible to the eye. He therefore requested that his personal cuvee be served in bottles made of transparent crystal glass with a flat bottom to remedy this defect, as well as to foil any would-be assassins from inserting explosives in the indentation at the base of the bottle.
23. The resulting "Cuvée de Prestige" (the first of its kind) was named CRISTAL, in reference to the look and feel of the bottle. For its initial years of production, CRISTAL was made strictly for the private consumption of the Tsar. After the fall of the Russian Monarchy during the Russian Revolution in 1917, CLR decided after a short time to continue to produce CRISTAL and market it internationally. CRISTAL was first made commercially available in the UK in 1924.
24 CRISTAL is, and has always been, CLR's flagship brand since its creation in 1876. The history and prestige associated with CRISTAL is very valuable to us and, as such, we have ensured that the look and feel of the bottle has remained largely unchanged throughout the years.
25. CLR's success is directly linked to and has resulted from the reputation and success of CRISTAL. As such, whilst there is no separate entity for CRISTAL and it is part of the family of...
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