by Kerana Todorov
March 24, 2021
Delicato Vineyards has filed a lawsuit against Chile’s Vina Concha Y Toro for alleged trademark infringement, according to a complaint filed recently in federal court.
Manteca-based Delicato alleges the imagery used on Concha Y Toro’s Frontera labels and packaging infringe on Delicato’s Nighthawk trademarks, according to the complaint filed March 15 in U.S. District Court for the Northern District of California. Both Frontera’s and Nighthawk’s bottled and boxed wines are sold nationwide.
The complaint also named Fetzer Vineyards, Concha Y Toro’s subsidiary based in Hopland, Mendocino County.
Delicato is the fifth largest winery in the US while Concha Y Toro/Fetzer Vineyards is the10th biggest wine company, according to Wine Business Monthly.
The trademarks Delicato alleged were infringed include Nighthawk by Bota; Nighthawk Black; and Nighthawk Gold, according to the court filing. Delicato launched “Nighthawk by Bota” brand in 2015. That brand, which includes Nighthawk Black and Nighthawk Gold, sell more than 2 million 9-liter cases annually, according to the lawsuit.
The trademark questions were raised after Concha Y Toro redesigned its Frontera labels and packaging over the past year as it prepared to launch a 3-liter box wine, according to the complaint.
Delicato said the design of Frontera’s boxed wine incorporated “key elements” of Nighthawk’s trade dress – “a bird of prey, evening or night sky and mountainous background,” according to the court filing. This would lead to confusion, the complaint alleged.
“Defendants’ identical use of the bird of prey and evening or night sky on its product label and packaging creates an overall commercial impression that is identical to Delicato’s Nighthawk Trademarks,” according to the complaint.
“Defendants are not affiliated or associated with Delicato and have never been authorized or licensed to use the Nighthawk Trademarks or Designs in connection with the sale or offering for sale of any goods or services,” according to the lawsuit.
The complaint seeks to stop Concha Y Toro’s use of the allegedly infringing imagery, have the company pay unspecified damages and hand over profits from the sales of Frontera wine sold in packaging with the allegedly infringing design and other relief.
Delicato said it notified Concha Y Toro about the trademark issues before filing the complaint, according to the court filing. However, Concha Y Toro/Fetzer “failed to cease their infringing activity,” according to the lawsuit.
Concha Y Toro could not be reached to comment on the matter.
Delicato said in a statement to winebusiness.com: “As one of the fastest-growing wine brands in the world, the category leader in premium 3L box wines and the industry’s leader in alternative packaging, we will vigorously defend the BOTA BOX® and NIGHTHAWK BY BOTA® franchises in all global markets in which we conduct business. We have made several attempts to amicably resolve the trademark infringement matter with the owners of Frontera 3L boxed wine and will allow the matter to proceed through the federal court system, and cannot comment further at this point.”
Delicato in January filed another trademark-related lawsuit against a backpack company over the use of the name “Bota.” That case remains in litigation, according to court filings. Delicato declined to comment on that lawsuit, citing the pending litigation.