San Antonio Winery Inventively Served Company in China – Metropolitan News-Enterprise

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Tuesday, November 15, 2022

 

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Ninth Circuit:

San Antonio Winery
Inventively Served Company in China

 

By
a MetNews Staff Writer

 

The historic San Antonio Winery
successfully served a Chinese company that infringed on its trademarks, the
Ninth U.S. Circuit Court of Appeals declared yesterday, rejecting the
defendant’s contention that the approach used to avoid the more time consuming
procedure under the Hague Convention is available only in administrative
proceedings in patent and trademark cases.

Rather than serving authorities in China,
pursuant to the Hague Convention on the Service Abroad of Judicial and
Extrajudicial Documents, the winery—located about two miles northeast of
downtown Los Angeles—served the director of the Patent and Trademark Office
(“PTO”), invoking a provision that relates to foreign companies registering
trademarks here.

The Chinese company it sued is Jiaxing Micarose
Trade Co., Ltd. which, in 2018, registered the mark “RIBOLI” for use in
labeling shoes and clothing. That had no effect on the winery, but its ire was
raised when, two years later, Jiaxing sought to register that mark in
connection with household items including wine pourers, bottle stands, and
cocktail shakers.

 

This photo shows the entrance of the San Antonio Winery.

 

Family Name

The winery sells such items, in addition
to producing wines, including Stella Rosa, and running restaurants. And
“Riboli” is the name of the family that owns and operates the business with
“RIBOLI” and “RIBOLI FAMILY” being its registered trademarks.

Stefano Giuseppe Riboli, prior to World
War II, went to work for his uncle, Santo Cambianica, who had founded the
winery on Lamar Street in 1917, and upon Cambianica’s death in 1956, Riboli
became owner of the business. He died in 2019 at age 97, and his three children
and several grandchildren carry on the business.

San Antonio Winery brought suit in the
U.S. District Court for the Central District of California. In effecting
service on Jiaxing, it employed a procedure set forth in 15 U.S.C. § 1051(e), a
portion of the Lanham Act. It says:

“If the applicant is not domiciled in the
United States the applicant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of a person resident
in the United States on whom may be served notices or process in proceedings
affecting the mark.”

But if the registrant fails to designate
such a person, it provides, “notices or process may be served on the Director.”

Wu’s Order

A clerk entered a default when Jiaxing did
not appear, but Judge George H. Wu of the Central District of California
declined to enter a default judgment, perceiving defective service.

Circuit Judge Holly A. Thomas wrote the
opinion reversing Wu’s order, saying:

“This case presents a question of first
impression in the circuit courts of appeals: Do the procedures of Section
1051(e) provide a means of serving defendants in court proceedings affecting a
trademark? Or do they apply only in administrative proceedings before the PTO?
We conclude that Section 1051(e) applies in both court and administrative
proceedings. We therefore vacate the district court’s decision to the contrary
and remand for further proceedings.”

Thomas’s Opinion

Sec. 1051(e), she noted, refers to
“proceedings affecting the mark.” Thomas wrote:

“The word ‘proceedings’ requires no
complex interpretation: its plain and ordinary meaning includes proceedings in
court. Indeed, as dictionary definitions from the time of the Lanham Act’s
passage make clear, court proceedings are the prototypical form of legal
proceeding.”

She went on to say:

“It is equally clear that court
proceedings can ‘affect’ a trademark….Our  case law is replete with examples of
civil cases affecting trademarks.”

Thomas added:

“The use of the word ‘process’ in Section
1051(e) is particularly significant because there is no process served in
administrative proceedings before the PTO. Proceedings before the PTO are
initiated with ‘notices’ issued by the agency.”

She said that contrary decisions of
district courts are not persuasive.

The opinion does not direct that a default
judgment be entered, however. It orders a remand for the District Court “to
consider the remaining issues in the first instance.”

The case is San Antonio Winery, Inc. v. Jiaxing
Micarose Trade Co., Ltd
., 21-56036.

 

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