IP Law Daily Italian wine importer barred from selling ‘Bella Rosa’ wine in U.S.
Wednesday, February 26, 2020

Italian wine importer barred from selling ‘Bella Rosa’ wine in U.S.

By John W. Scanlan, J.D.

The trade dress for the importer’s "Bella Rosa" wine was confusable with "Stella Rosa" brand of Italian wines, but not with New York winery’s "Bella Rosa" wine.

A importer of Italian wines was temporarily enjoined from importing two varietals of wine under the "Bella Rosa" mark because its trade dress was confusingly similar to a competing importer’s "Stella Rosa" mark for similar varietals, the federal district court in Miami ruled in granting in part and denying in part the importer’s motion for a temporary restraining order. However, the injunction was denied to a second domestic winery that could not show a likelihood of success for its claim because its "Bella Rosa" mark was distinguishable (San Antonio Winery, Inc. v. Enovation Brands, Inc., February 24, 2020, Scola, R.).

Plaintiff San Antonio Winery, Inc., produces and imports from Italy the "Stella Rosa" brand of Italian wines and has multiple federally registered marks for this brand. San Antonio’s wines are sold in supermarkets, "big box" stores, and mass retailers such as Target. Two Stella Rosa wines—the "Stella Rosso" and "Moscato D’Asti" varietals—had sales of more than $60 million in 2019. Plaintiff Merritt Estate Winery, Inc., operates a New York winery and has offered a red wine under the mark "Bella Rosa" since 1984. This wine is sold only online. San Antonio and Merritt filed suit against defendant Enovation Brands, Inc., arguing that Enovation’s packaging infringes their trade dress and marks. Enovation also has plans to distribute wines through Target stores under the "Bella Rosa" mark. Merritt and San Antonio moved for a temporary restraining order against Enovation to enjoin it from selling wine.

Trade dress/San Antonio. The court granted the injunction with respect to San Antonio’s claim because the wineries had shown that San Antonio was likely to succeed on the merits of its trade dress claim under the Lanham Act. There was no question that San Antonio’s trade dress was "non-functional," and the court found that the wineries established that San Antonio’s trade dress was "inherently distinctive" or had acquired "secondary meaning" and that Enovation’s trade dress was "confusingly similar." Even though Enovation argued that various elements of its trade dress were shared by many other wines, the court found the unique combination of elements made its trade dress distinctive.

Furthermore, the balance of factors in the Eleventh Circuit’s seven-factor test for determining likelihood of confusion favored San Antonio. There was no dispute regarding the similarity of the two companies’ varietals, with the court observing that all four wines at issue were inexpensive, low-alcohol, Italian, and sweet or semi-sweet; nor was there any dispute regarding the similarity of the marketing methods and sales channels. These factors weighed in favor of San Antonio. The court found that San Antonio’s Stella Rosso trade dress to be moderately strong or relatively strong due to the fact that several key elements of the trade dress were arbitrary. Enovation argued that four elements of the trade dress—the maroon screw top, the off-white label, the raised insignia on the glass positioned on the bottle’s shoulder, and the red and black lettering—should be considered generic because they were shared by hundreds of wines, but the court noted the engraved crown emblem was unique and lettering in which the first word was black and the second red was almost unique with one or two exceptions. The overall impression of the similarity of the marks was that Enovation’s Bella Rosa mark bore a "general similarity" to the design of the San Antonio mark, especially given that the companies’ wines essentially would be sold side-by-side at Target. It was not unreasonable to infer that Enovation intended to benefit from San Antonio’s reputation given its sales success and awards that the Stella Rosa wine had received, with the court noting that Enovation did not offer evidence to challenge this inference. Finally, although actual evidence of customer confusion was scarce given that Enovation’s wine had not yet reached the market, the wineries did provide evidence that a competitor and a Target representative mistakenly had contacted San Antonio regarding Enovation’s Bella Rosa wine.

As a result, the court concluded that San Antonio likely would suffer harm to its reputation resulting from consumer confusion regarding Enovation’s wine, and the balance of harm to Enovation was far outweighed by the potential harm to San Antonio and its goodwill.

Trade dress/Merritt. However, the court declined to grant an injunction to Merritt because it failed to establish a likelihood of confusion that would enable Merritt to succeed on its Lanham Act claim. Applying the same seven-factor test, the court began by observing that the likelihood of confusion was much lower with respect to Merritt’s mark. First, there were several other Bella Rosa brands of wine produced by third parties that had co-existed with Merritt’s wine for years. In addition, Merritt had stated that it always prominently displayed "Merritt Winery" alongside the Bella Rosa mark on its labels, and the court found that the manner in which the marks were displayed on the Merritt labels made them readily distinguishable. Furthermore, unlike the San Antonio wines, which were very similar to the Enovation wines, the Merritt wine was a red wine, a different type of wine, and it was produced in New York rather than imported from Italy. Merritt wines are sold only online and the Enovation wines will be sold only at Target, resulting in a much smaller overlap in their customer bases. The court could not judge the similarity of their marketing because the wineries provided no evidence of Merritt’s marketing, and their allegations regarding Enovation’s intent with respect to Merritt’s wine were speculative and unpersuasive, the court said.

This case is No. 1:20-cv-20515-RNS.

Attorneys: Daniel M. Cislo (Cislo & Thomas LLP) for San Antonio Winery, Inc. and Merritt Estate Winery, Inc. Nicole Fundora (Brickell IP Group PLLC) for Enovation Brands, Inc.

Companies: San Antonio Winery, Inc.; Merritt Estate Winery, Inc.; Enovation Brands, Inc.

MainStory: TopStory Trademark FloridaNews

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