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Delicato and Treasury Wine Estates tentatively agree to settle trademark infringement case

by Kerana Todorov
December 17, 2018

A trademark dispute between Delicato Vineyards and Treasury Wine Estates Americas Co. over a new brand the Australia-based wine company introduced this summer may be settled, according to court records.

Attorneys for both Delicato and Treasury Wine Estates on Nov. 27 told the court they had reached a settlement in principle, according to a notice filed with the court. The parties asked for a month to draft a formal settlement agreement, according to the court filing.

“The parties jointly move and respectfully request that the Court stay all remaining dates in this action for 30 days to afford the parties sufficient time to draft and execute a formal settlement and file a Joint Motion to Dismiss,” attorneys for both Delicato and Treasury Wine Estates stated in their Nov. 27 filing.

US District Judge Vince Chhabria on Nov. 29 dismissed the case without prejudice – leaving the parties to option to reopen the case within 60 days, according to a court filing. If no such request is filed, the dismissal becomes final.

“As detailed in the parties’ joint notice of settlement and motion to stay recently filed in the federal litigation, Delicato Family Vineyards and Treasury Wine Estates have reached a settlement in principle and Delicato will continue to defend its rights,” Chris Indelicato, chief executive officer of Delicato Family Vineyards, said in a written statement issued Thursday. “We will vigorously work to protect the valuable reputation and customer goodwill of our brands, including the BRAZIN® mark.”

(Delicato Family Vineyards is referred as Delicato Vineyards in court records.)

Treasury Wine Estates declined to comment on the case, saying it could not comment while litigation is ongoing.

The two companies have been sparring in court since September when Delicato accused Treasury Wine Estates of alleged trademark infringement over a new brand named “emBRAZEN.”

Delicato, which has been producing the wine “BRAZIN” for about 10 years, filed the trademark infringement lawsuit against Treasury Wine Estates a few weeks after the Australia-based company publicly launched a new wine brand called “emBRAZEN”, according to court records.

Delicato accused Treasury Wine Estates of attempting to “capitalize on Delicato’s valuable reputation and customer goodwill in the BRAZIN Mark by using the confusingly similar emBRAZEN mark in connection with the advertisement, marketing, promotion, sale, and/or offer for sale of wine with similar price points to wine bearing the BRAZIN Mark in overlapping retail and distribution channels in a manner that creates consumer confusion,” according to the complaint filed in federal court on Sept. 25.

Delicato, a family-owned company based in Manteca, Calif., sells about 20,000 cases of BRAZIN wine nationwide and internationally annually, according to the court filing.

Treasury Wine Estates in August introduced the labels by state the wines. The labels were inspired from female pioneers. The new brand was launched on Aug. 26 – Women’s Equality Day.

The company said they “take inspiration from extraordinary women of the past who dared to shatter convention,” according to a press release distributed in August. The new California wines include a Chardonnay, a Cabernet Sauvignon and a Red Blend.

Treasury in February initiated an application to register the mark EMBRAZEN with the United States Patent and Trademark Office. Delicato opposed the application, citing “priority and likelihood of confusion” with its trademark BRAZEN, according to USPTO records. Proceedings were suspended in October pending the resolution of the complaint in federal court.

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