Spanish Producer's Family Feud: "Pesquera" Trademark Case Dismissed
February 05, 2021
A U.S. federal judge has dismissed a trademark infringement lawsuit a Spanish wine company embroiled in a family dispute filed last year over the brand “Pesquera,” according to court records.
U.S. District Judge Lucy Koh granted a motion on Jan. 26 to dismiss the case, saying the California court was the wrong jurisdiction, according to the order.
The San Jose-based judge noted the family is already involved in litigations in Spain, which she said was an “adequate alternative forum,” according to the order.
Koh dismissed the lawsuit “with prejudice” – or permanently.
What happens next is unclear. Koh’s decision does not settle the ownership of the trademark “Pesquera.”
The defendant in the US case, Alejandro Fernández Perez, claims he owns the trademark, according to court filings. Fernández is a longtime wine Spanish producer who started producing wine in the Ribera del Duero in the 1970s under several marks, including “Pesquera.”
In 1989, Fernández registered the trademark “Pesquera” in the United States, a few years after his company began exporting the wine from Spain to America.
In 1990, Fernández and his now former wife, Emilia Rivera Rueda, formed a corporation in Spain, Alejandro Fernández Tinto Pesquera, S.L., according to the complaint. The Valladolid-based company stated that Fernández transferred the trademark “Pesquera” when the business incorporated under Spanish law, according to court filings.
Therefore Alejandro Fernández Tinto Pesquera, S.L. owns the mark “Pesquera,” according to court filings. In its complaint filed in March 2020, the company accused Fernández of trademark infringement and other allegations, according to court records.
Fernández had filed the mark application for “Pesquera” “as an individual, but did so on behalf of the family-operated Tinto Pesquera wine business,” according to the complaint.
However, Fernández said the transfer of the “Pesquera” brand never happened, according to court records. Instead, Alejandro Fernández Tinto Pesquera, S.L., had a license agreement that “granted (the company) the right to Fernández’s mark,” according to the motion filed by the defense to dismiss the case. Fernández revoked that license agreement in 2018, according to the defense.
The company said there was no trademark license, according to the complaint.
Fernández and Emilia Rivera Rueda filed for divorce in 2017 in Spain, according to court filings.
Rivera and their three oldest daughters then “launched a relentless campaign to oust Mr. Fernández and the other daughter (Eva Maria) from (the Alejandro Fernández Tinto Pesquera, S.L.) group and deprive them of their rights and ownership interests in the companies,” according to a motion filed by the defense. In 2018, Rivera and the three older daughters – Lucia, Maria Olga, and Maria Cruz “fired” Fernández as the manager of Alejandro Fernández Tinto Pesquera, S.L., according to the court filing. Fernández, 87, remains a shareholder.
Fernández also accused his former wife and the three daughters who sided with their mother of allegedly “funneling” out of the company and its subsidiaries “most of their revenue and assets worth millions of dollars,” according to a motion filed by Fernández’ attorneys.
“In doing so, Mr. Fernández’s ex-wife and three daughters have deprived him of the business that he built through five decades of hard work,” the court filing alleged. They have left Fernández “virtually indigent” with a monthly stipend of 1,500 euros – or about $1,800, according to the motion. “This case is the latest act of abuse in seemingly interminable efforts by Mr. Fernández’s family to attack him and deprive him of his legacy,” according to the filing.
Fernández’ attorney sought to dismiss the federal case, noting among other points, that their client – like Alejandro Fernández Tinto Pesquera, S.L – are based in Spain, according to the filing. “This case has no connection to California. At bottom, this case concerns a Spanish company in a dispute with its Spanish shareholder over global intellectual property rights for a Spanish wine label,” according to the defense motion to dismiss the case.
Napa-based Folio Wine Company LLC, another plaintiff, began to import the “Pesquera” wine produced by Alejandro Fernández Tinto Pesquera in 2017, according to the complaint. But in the fall of 2019, Alejandro Fernández Perez, told Folio CEO Paolo Battegazzore that he, Fernández, was the owner of the “Pesquera” trademark registration and accused Folio of “infringing his trademark rights,” according to the complaint. Fernández demanded that Folio stop importing, marketing and distributing the wine, according to the complaint.
Fernández had retained the services of another important, Classical Wines, according to the court filing. Classical Wines submitted Colas applications to the U.S. Alcohol and Tobacco Tax and Trade Bureau in order to import wine produced by Alejandro Fernández Perez, through agents in the United States, tried to register alcoholic brands in multiple states, including Florida and Ohio, according to the complaint. That led to “further disrupting and/or interfering in the performance of the contract between (Alejandro Fernández Tinto Pesquera) and Folio, and causing financial and reputational harm to Plaintiffs,” the complaint alleged.
In February 2020, a Florida wine distributor emailed Folio that Classical Wines was importing “Pesquera” wines from Alejandro Fernández Perez, claiming the wine was “The Original Pesquera we all knew from the 80’s and 90’s,” which helped “shape” Ribera Del Duero, according to the complaint. Among other comments, the email stated that Fernández was producing the “True Pesquera” wine with daughter Eva, according to the filing.
Then in March 2020, the Ohio Division of Liquor Control told Folio that Classical Wines was the “authorized supplier” of “Pesquera” wines, according to the complaint. Folio could no longer supply “Pesquera” wines in the state.
The complaint, among other goals, sought to stop Fernández from selling “Pesquera” branded wine and have the TTB either transfer the mark to the company or cancel it “on the basis it has been fraudulently obtained and/or maintained” by Fernández, according to complaint.
But the judge noted in her decision that the mark’s ownership has to be established before the federal court can decide whether or not Fernández has infringed on the “Pesquera” mark, according to the filing. It would be up to a Spanish court to decide the “validity” of the mark transfer at the time of incorporation, according to the document.
As of this week, “Tinto Pesquera” was among the brands listed on Folio’s website. A representative for Folio confirmed the company will continue to sell “Pesquera” wine in the US. It declined to comment on the legal proceedings she noted are “ongoing.”
In Valladolid, Familia Fernandez Rivera’s winery sells a number of brands, including “Tinto Pesquera,” according to its website.