A French champagne producer was not barred by the equitable doctrine of laches from pursuing trademark infringement claims against a Spanish winery for using the name CRISTALINO on sparkling wine (cava) in the United States, which allegedly infringed the French producer's U.S.-registered CRISTAL marks, the U.S. Court of Appeals in St. Louis has determined. The court reversed an order by the federal district court in St. Paul, Minnesota dismissing the claims (TRADEMARK LAW GUIDE ¶61,276).

The French producer's attorneys first learned of the Spanish winery's use of the CRISTALINO mark in the United States in 1995, but notice of possible infringement alone was insufficient to measure the beginning of the period of delay, for purposes of a laches defense. The delay period would not begin until the infringement became actionable, the court said.

Evidence that sales of CRISTALINO began to exceed sales of CRISTAL in the mid-1990s did not demonstrate that the French producer had an actionable claim as of 1995, in the court's view. The French producer asserted that, at that time, it had concluded that the lower quality of the Spanish winery's cava would distinguish it from the French producer's champagne, making trademark litigation untenable. The lack of evidence that the quality of the Spanish winery's cava had changed since the mid-1990s was irrelevant to the question of whether the qualities of the parties' wines were so disparate in 1995 as to preclude an infringement claim.

Furthermore, the Spanish winery was on at least constructive notice that the French producer objected to the use of the CRISTALINO mark because the French producer had successfully opposed registration of the mark in Spain in 1990 and of similar marks in Colombia in 1991 and the United States in 1997.

Evidence of prejudice on the part of the Spanish winery was insufficient, in the court's view. The Spanish winery had spent several million euros expanding and improving its facilities, but these facilities produced several brands, so the winery's investments could not be deemed to have been made in reliance on the French producer's delay in bringing suit.

Champagne Louis Roederer, 8th Cir., ¶61,445