Florida based wine importer, Palm Bay International Inc., has filed a lawsuit against Italian wine producer, Citra, over the trademarks “Sheep Thrills” and “Niro.”
In the complaint, filed February 20, 2018, Plaintiff’s Palm Bay allege that Defendant Citra has wrongfully claimed ownership of its “Sheep Thrills” and “Niro” trademarks and that Palm Bay’s ownership of the marks is “clouded” by Citra’s continued usage. Citra maintains that it owns the two trademarks at issue by virtue of a contract entered into with Palm Bay.
In 1991, Palm Bay and Citra entered into an agreement that provided Palm Bay with exclusive rights to import Citra brand wine and other Citra brand products in exchange for Palm Bay achieving defined annual sales obligations. According to the complaint, the parties “enjoyed a long and mutually beneficial business relationship” pursuant to the contract until October 2017, when Citra served Palm Bay with a purported Notice of Termination of the contract, effective April 30, 2018.
In 2010, Palm Bay filed COLA applications in its own name seeking label approval for the “Niro” brand and in 2015 for the “Sheep Thrills” brand, both of which were approved by the TTB. According to the complaint, Palm Bay also claims to have created and financed all marketing and promotional materials for the “Sheep Thrills” and “Niro” brands in an effort to build brand awareness. Plaintiff, Palm Wine, a related entity to Palm Bay, owns the U.S. Federal Trademark “Sheep Thrills” for use in connection with wines which was issued in November of 2016. Palm Bay also claims all common-law trademark rights in the “Niro” brand due to its marketing activities and investments in brand awareness.
According to the complaint, Defendant Citra’s Trademark Application for the mark “Sheep Thrills” in September 2016 was rejected due to PalmWine’s prior-filed Trademark Registration for the same mark and goods. Defendant Citra owns the mark “Niro di Citra” in connection with wine products which, according to Plaintiff Palm Bay, has not been used in more than three years and “Citra has abandoned whatever rights existed in the NIRO DI CITRA mark pursuant to the Lanham Act and the Federal Trademark Registration [and] should be cancelled”.
On February 7, 2018, Palm Bay sent a cease and desist letter to Citra and importer and distributor, The Winebow Group, demanding that they cease and desist from any further efforts to import, offer to sell, sell, market, advertise or promote “Sheep Thrills” and/or “Niro” brand wine products in the U.S. According to the complaint, defendants have not responded.
Palm Bay is seeking a declaration that they are the exclusive owner of these two US trademarks and wants to prevent Defendants from importing, marketing and selling “Niro” and “Sheep Thrills” wines in the United States.