E. Remy Martin & Co., S.A. v. Shaw-Ross Intern. Imports, Inc.

• Decision Date: 08 April 1985
• Docket Number: No. 84-5212,SHAW-ROSS,84-5212
• Parties: E. REMY MARTIN & CO., S.A., Plaintiff-Appellant, v.INTERNATIONAL IMPORTS, INC., and Roger Myers d/b/a F. Remy & Cie, Defendants-Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1525

756 F.2d 1525

225 U.S.P.Q. 1131

E. REMY MARTIN & CO., S.A., Plaintiff-Appellant, v. SHAW-ROSS INTERNATIONAL IMPORTS, INC., and Roger Myers d/b/a F. Remy & Cie, Defendants-Appellees.

No. 84-5212.

United States Court of Appeals Eleventh Circuit.

April 8, 1985.

Joel M. Freed, Burns, Doane, Swecker & Mathis, R. Danny Huntington, Alexandria, Va., Hugo L. Black, Jr., Kelly, Black, Black, Byrne & Beasley, P.A., Richard M. Bales, Jr., Miami, Fla., for plaintiff-appellant.

James V. Johnstone, Coral Gables, Fla., for defendant-appellee Shaw-Ross Intern. Imports, Inc.

Thomas Marsteller, Payne-Marsteller, P.C., Houston, Tex., for defendant-appellee R. Myers.

Appeal from the United States District Court for the Southern District of Florida.

Before HILL, KRAVITCH and SMITH ^*, Circuit Judges.

EDWARD S. SMITH, Circuit Judge:

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.

Background

Remy Martin is a French company which has been in the business of distilling and marketing cognac and brandy since 1724. ¹ Cognac and brandy are distillates of wine, with cognac being brandy distilled from wine made from grapes grown in a particular part of France. Since at least 1884 Remy Martin has distributed its cognac in the United States. It markets its products here under three United States registered trademarks: REMY MARTIN for cognac, registered 1963, claiming use since 1884; ST. REMY for brandy, registered 1976, claiming use since 1972; and REMY for brandy, registered 1981, claiming use since 1979.

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, ² and in 1981 Myers retained a new attorney with the objective of again securing registration of the mark in the United States.

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.

OPINION

1. Standard of Review

This court reviews the district court's denial of a preliminary injunction to determine whether that court abused its discretion. ³ If the lower court has misapplied the law, its conclusions are subject to our broad review. Factual findings, however, will be reversed only if clearly erroneous. ⁴

The Lanham Act ⁵ provides that any person who shall, without the consent of the registrant, use in commerce any registered mark in connection with which "such use is likely to cause confusion, or to cause mistake, or to deceive * * * shall be liable * * * for the remedies [including injunctive relief] hereinafter provided." ⁶ In this circuit a determination of likelihood of confusion, mistake, or deception is a matter of fact that we may overturn only if clearly erroneous. ⁷ However, if the trial court has misapplied the law, then this court must review and correct the error without deference to that court's determination regarding the legal issue. ⁸

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: ⁹

While this Court does not determine that the plaintiff [Remy Martin] will not prevail on the merits, it does not find at this point in the case that there is substantial likelihood that the plaintiff will prevail on the merits. It has not been shown that irreparable injury will result if preliminary injunction is not granted.

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." ¹⁰ It further held that: "A possible confusion, as may be feared, does not within itself give rise to irreparable damage." ¹¹

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. ¹² This rule is grounded in the statutory language and applies as well in the context of a preliminary injunction, where showings of substantial likelihood of prevailing on the merits and substantial threat of irreparable harm are the first two of the four tests to be satisfied to obtain such relief. ¹³ This means that a sufficiently strong showing of likelihood of confusion may by itself constitute a showing of substantial likelihood of prevailing on the merits and/or a substantial threat of irreparable harm. ¹⁴

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. ¹⁵ We reserve judgment until concluding our analysis of these factors, when we can weigh them as a whole, and then determine whether there exists a substantial likelihood of Remy Martin's prevailing on the merits.

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." ¹⁶ The question, however, is not whether the purchasing public can readily distinguish wine from cognac but whether the products are the kind the public attributes to a single source. As our predecessor court has noted, "[t]he greater the similarity between the products and services, the greater the likelihood of confusion." ¹⁷ Moreover, the rights of the owner of a registered trademark are not limited to protection with respect to the specific goods stated on the certificate--for Remy Martin, cognac and brandy--but extend to any goods related in the minds of consumers in the sense that a single producer is likely to put out both goods. ¹⁸

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. ¹⁹

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." ²⁰ It further found that: ²¹

The bottles or containers as admitted in evidence are distinct in their type and composition--the Remy or Remy Martin cognac bottle being a black frosted round hippy bottle with a gold label, and the F. Remy or Remy wine bottle being a multi-flowered champagne or sparkling wine type bottle.

In evaluating the similarity of marks, we must consider the...