Rehearing and Rehearing En Banc Denied June 6, 1985.
In this trademark infringement case, plaintiff-appellant E. Remy Martin & Co., S.A. (Remy Martin), appeals from an order of the United States District Court for the Southern District of Florida, denying Remy Martin's request for a preliminary injunction against alleged trademark infringers, defendants-appellees Shaw-Ross International Imports, Inc. (Shaw-Ross), and Roger Myers d/b/a F. Remy and CIE (Myers). We reverse and remand.
Remy Martin is a French company which has been in the business of distilling and marketing cognac and brandy since 1724.
Myers is an American who has been in the wine business since 1935. In 1947 he began exporting wines from France, including a sparkling wine labeled F. REMY, with the name REMY alone on the closure of the bottle. The trademark F. REMY was registered in France in 1947, renewed in 1968 to cover wines, spirits, and liquors, and renewed in 1978 for wines only. In 1970 in France, Myers agreed with Remy Martin that he would renounce rights in the name F. REMY for spirits and liquors and restrict his use to wines only. Myers registered the trademark F. REMY in the United States in 1957 for wine and champagne. The registration lapsed after its statutory term expired in 1977,
Shaw-Ross imports and distributes in the United States, among other products, Myers' wines from France under the F. REMY label. Myers designated Shaw-Ross his importer in December 1982.
Toward the end of the 1970's Remy Martin began a massive advertising campaign to realize the full potential of the American market. The campaign, capitalizing upon the perceived public recognition of the nickname "Remy" for REMY MARTIN cognac, was launched for the 1979 Christmas season and cost many millions of dollars. As a result, Remy Martin's United States sales and market share greatly increased.
Myers exported F. REMY wines to the United States from 1947 to 1976 in an amount which is disputed, but which is very small compared to Remy Martin's United States sales during this period. It is undisputed that Myers terminated his F. REMY shipments to the United States from 1976 through all or most of 1981, or approximately 6 years, a period coinciding with the lapse of his United States F. REMY trademark registration. Myers revived shipments to the United States in the latter part of 1981 or early 1982. Total 1982, 1983, and planned 1984 shipments equal roughly three-quarters of Myers' total shipments for the 1947-76 period, assuming the higher disputed figure.
In December 1983 Remy Martin filed suit in the court below for trademark infringement, unfair competition, or dilution and moved for a preliminary injunction. For 1 week in January 1984 a magistrate heard testimony and took evidence. On March 5, 1984, the court below issued the order here under appeal, denying Remy Martin's request for a preliminary injunction.
1. Standard of Review
This court reviews the district court's denial of a preliminary injunction to determine whether that court abused its discretion.
The Lanham Act
2. Errors of Law
Our review of the district court's opinion uncovers four errors of law, discussed as they arise below and summarized here. That court: (1) wrongly held Remy Martin to a showing of actual, as opposed to likelihood of, confusion; (2) wrongly required evidence of actual confusion as proof of the irreparable harm necessary to grant a preliminary injunction; (3) wrongly considered the status of the allegedly infringing mark under foreign trademark law; and (4) wrongly considered or ignored the statutory presumption of abandonment.
3. Substantial Likelihood that Remy Martin Will Prevail on the Merits — i.e., Show Likelihood of Confusion
The trial court held that:
In arriving at this conclusion, that court found: "No evidence has been presented to show actual confusion between the use of the two trademarks Remy or Remy Martin as applied to cognac brandies, and Remy or F. Remy as applied to wines or sparkling wines."
The law is well settled in this circuit that evidence of actual confusion between trademarks is not necessary to a finding of likelihood of confusion, although it is the best such evidence.
The district court has erred on both these points of law, to the best we are able to discern from its order. Given such apparent errors, we must re-examine the record and findings below and apply the law correctly. In doing so, we make use of the various elements helpful in determining likelihood of confusion, as identified by this circuit in numerous trademark cases.
a. Similarity of Product.
The lower court found that "[t]he products [wine as compared to cognac or brandy], to the drinking world, are dissimilar."
Here, Remy Martin's products, cognac and brandy, are distilled from Myers' type of product, wine. To us it appears quite likely that, even assuming a sophisticated consumer from the drinking world, such a consumer could easily conclude that Remy Martin had undertaken the production and sale of wine and that its name and goodwill therefore attached to Myers' product, both products originating in France. Contrary to the lower court's finding, there is thus a high degree of similarity between the goods.
b. Similarity of Design or Marks.
The lower court found that, from 1981 on, Roger Myers exported sparkling wines to the United States "under the brand `F. Remy' or `Remy' but with labels and bottles distinctively different from Remy or Remy Martin cognac bottles and labels."
In evaluating the similarity of marks, we must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.
c. Use of the Mark Abroad.
The trial court found that Remy Martin had known for more than 13 years of the F. REMY mark and its use on wine.
Our review of the record causes us no quarrel with these findings. We do hold that the district court erred as a matter of law to the extent it relied upon Remy Martin's knowledge of Myers' use in France and upon the 1970 agreement concerning Roger Myers limiting the use of his mark in France to wines. Like an earlier Battle of the Brandywine, this skirmish must be fought in this country, notwithstanding the presence of a French connection. Our concern must be the "business and goodwill attached to United States trademarks, not French trademark rights under French law."
d. Identity of Retail Outlets and Purchasers.
So far as is apparent from the record, both F. REMY wine and REMY/REMY MARTIN brandies/cognac are sold through identical retail outlets — wine and liquor stores, bars, and restaurants — and to identical purchasers — consumers of alcoholic beverages.
e. Similarity of Advertising Media Used.
Remy Martin's REMY nickname advertising campaign used extensive media resources — billboards, magazines, and the like. Myers testified that he spent no money on advertising, although his importer did promotions. The record shows a large color advertisement for F. REMY sparkling wines, "La Rose" and "Anniversaire," with the two flowered bottles in ice and the slogan "Say it with flowers from France."
f. Myers' Intent; Abandonment.
The record reflects no evidence of Roger Myers' subjective intent to adopt the REMY mark to derive the benefit of Remy Martin's reputation. Indeed, his counsel contends the opposite — that Remy Martin encroached upon Roger Myers' goodwill and reputation. However, a closely related issue regarding intent — abandonment — needs to be addressed here.
The district court found:
Since it is undisputed that Myers did not use his mark in the United States for approximately 6 years, Remy Martin made out at least a prima facie case of abandonment.
Myers must therefore show plans to resume commercial use of the mark.
g. Actual Confusion.
As stipulated, there is no evidence of actual confusion in this case.
h. Type of Trademark.
Finally, a factor helpful in determining likelihood of confusion is whether the registrant has a "strong" or a "weak" mark.
A second aspect of this point is whether the mark is purely fanciful or arbitrary, and hence "strong," as opposed to descriptive and hence "weak."
To conclude, we must weigh all the factors discussed above before finding if the court below erred in finding no substantial likelihood of Remy Martin's showing likelihood of confusion. In our view, the products — wine as compared to cognac or brandy — are closely related, and the marks, while affixed to bottles and labels differing somewhat in design or shape, are highly similar or identical — F. REMY or REMY as compared to REMY MARTIN, ST. REMY, or REMY. The use of Roger Myers' mark in France is irrelevant to this proceeding. Retail outlets and purchasers are similar; little evidence exists on similarity of advertising media. Roger Myers does not appear to us, at this stage, to have rebutted the statutory presumption of abandonment by affirmatively showing intent to resume use in the United States prior to 1982. Finally, Remy Martin's marks appear to be strong.
Taking all this together, we conclude that Remy Martin has made a strong showing of likelihood of success in establishing infringement.
4. Granting the Preliminary Injunction
Having found both numerous errors of law in the district court's order and that it erred in not finding a substantial likelihood of Remy Martin's showing likelihood of confusion, we must determine if the court abused its discretion in not granting the preliminary injunction. Concerning the first two of the four factors that must be considered prior to granting such an injunction — substantial likelihood of prevailing on the merits and substantial threat
This leaves the third factor, balancing whether the threatened harm to Remy Martin outweighs the threatened harm which the injunction may do to Roger Myers and Shaw-Ross, to be considered. The district court made no finding on this point, since it found negatively on the first two factors of the preliminary injunction. Remy Martin, which carries the burden of persuasion on each of these four points,
In sum, for the reasons discussed above, we hold that the trial court abused its discretion in not granting the preliminary injunction. As has been well stated:
5. The State Dilution Claim
Remy Martin also contends that the district court abused its discretion in failing to address Remy Martin's claim of entitlement to a preliminary injunction under Florida's anti-dilution law.
Accordingly, the order of the court below is reversed, and the case is remanded for entry of a preliminary injunction consistent with this opinion.
REVERSED AND REMANDED.