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Champagne Louis Roederer v. J. Garcia Carrion, S.A.

Champagne Louis Roederer v. J. Garcia Carrion, S.A.

United States Court of Appeals for the Eighth Circuit

March 10, 2009, Submitted; June 24, 2009, Filed

No. 08-2907

Opinion

 [***1214]   [*857]  SHEPHERD, Circuit Judge.

Champagne Louis Roederer ("Roederer") appeals the district court's dismissal on summary judgment of its trademark infringement suit against J. Garcia Carrion, S.A. ("Carrion") and Friend Wine Marketing, Inc., d/b/a CIV USA ("CIV USA") on the ground that Roederer's suit was barred by the equitable doctrine of laches. We reverse and remand.

Roederer is a wine producer incorporated under the laws of France. Roederer produces,  [**2] among other things, an expensive champagne that is sold under the name "Cristal." Created in 1876 as the official wine of the Imperial Court of Russia for Tsar Alexander II, Cristal has achieved significant notoriety, as the appellees put it, as the champagne of the "tsars and the stars." Roederer has registered the trademark "CRISTAL CHAMPAGNE" and  [***1215]  the trademark and design "CRISTAL CHAMPAGNE LR" in the United States.

Carrion is a Spanish corporation owned by Priesca, another Spanish corporation. Jaume Serra is a Spanish winery also owned by Priesca. In August 1998, Jaume Serra and Carrion merged into a single entity operating under the Carrion name.

Jaume Serra began making cava, a type of sparkling wine distinct from champagne, in 1984. By 1987, Jaume Serra was selling cava under the names "Cristalino Jaume Serra" or "Cristalino." By 1989, Jaume Serra was selling Cristalino cava in the United States. Early sales were small, but by 1997 Cristalino sales had grown to nearly 400,000 bottles in the United States.

CIV USA is an importer. CIV USA began importing Jaume Serra wine into the United States in either 1991 or 1992. CIV USA currently imports, distributes, and markets Carrion products  [**3] in the United States.

Roederer successfully objected to Jaume Serra's attempt to register the "CRISTALINO" mark in Spain in 1989. Roederer filed a similar objection to the registration of the "CRISTALINO JAUME SERRA" mark in Colombia in 1991, but abandoned the proceedings in 2000 for unexplained reasons. Similarly, Roederer at first opposed Jaume Serra's application to register "CRISTALINO JAUME SERRA" in the United States, but abandoned that opposition in 1997.

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569 F.3d 855 *; 2009 U.S. App. LEXIS 13509 **; 91 U.S.P.Q.2D (BNA) 1214 ***

Champagne Louis Roederer, Appellant, v. J. Garcia Carrion, S.A.; Friend Wine Marketing, Inc., d/b/a CIV USA, Appellees.

Subsequent History: On remand at, Motion to strike granted by, Motion granted by, in part, Motion denied by, in part, Motion denied by Champagne Louis Roederer v. J. Garcia Carrion, SA., 2010 U.S. Dist. LEXIS 9473 (D. Minn., Feb. 4, 2010)

Prior History:  [**1] Appeal from the United States District Court for the District of Minnesota.

Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D. Minn., July 23, 2008)

CORE TERMS

trademark, infringement, laches, district court, laches defense, cava, encroachment, progressive, facilities, notice, wine, asserting, objected

Civil Procedure, Appeals, Summary Judgment Review, Standards of Review, Trademark Law, Defenses, Defenses to Incontestability, Laches, Consumer Confusion, Circuit Court Factors, 8th Circuit Court, Federal Unfair Competition Law, Lanham Act, General Overview, Judgments, Summary Judgment, Evidentiary Considerations