California - A Texas federal judge handed down a preliminary injunction on Tuesday barring two liquor companies from importing and selling an orange liqueur that dilutes Cointreau Corp.'s trademark for its own brand.
Cointreau has shown a substantial likelihood that it will prevail on the merits of its trademark dilution claim, Judge David C. Godbey ruled in granting Cointreau's motion for the injunction.
Pura Vida Tequila Co. LLC and La Madrileña SA de CV respectively import and make Controy orange liqueur, while Cointreau owns and enforces the Cointreau trademarks for the same in the U.S. It was first granted a trademark for the Cointreau name in the U.S. in 1935.
Edouard Cointreau first distilled his eponymous orange liqueur in 1875, and the Cointreau distillery has been selling it ever since, bringing it to the U.S. in 1885.
La Madrileña, meanwhile, has sold Controy in Mexico since the 1930s and dominates the Mexican orange liqueur market with a greater than 60 percent market share. The company only recently arranged to export Controy to the U.S. through Pura Vida.
Controy's name, bottle shape and bottle label infringe on the Cointreau trademark, Cointreau alleges. The company is seeking damages and a permanent injunction against La Madrileña and Pura Vida's sale of Controy.
The Cointreau trademark has become famous and distinctive in the U.S., and the brand is the second most popular orange liqueur by sales volume in the nation, Judge Godbey said.
"The names of the products are alike both visually and aurally," he said. "The fact that many consumers may pronounce the first syllables of the words differently does not undermine the names' similarity, particularly as there is no correct pronunciation of a trademark."
The similarity of the names' sounds when spoken is particularly important, according to the judge.
"A consumer who orders Cointreau by name only in a bar or restaurant may not have the opportunity to scrutinize the bottle and label of the liqueur he is ultimately served," he said. "A bartender or waiter may thus serve Controy in error when a customer orders Cointreau."
The preliminary injunction only covers sales in the U.S. La Madrileña may still make and sell Controy in Mexico, the judge said. He also ordered Cointreau to post a $1 million bond upon the issuance of the injunction.