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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
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Christian Tenkhoff
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Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
THURSDAY, 25 SEPTEMBER 2014
HAVAIANAS anything but a (flip-)flop

Turin Court orders destruction of counterfeit flip-flops and invalidates HAV@NA CUBA trademark for class 25 goods.

With its decision of 11 July 2014, the Turin Business Court invalidated the Italian trademark HAV@NA CUBA (fig.) filed under application No TO2011C001761 for all goods in class 25 and established, amongst other things, that the use of marks containing the terms HAVANA (or HAV@NA) and HAVANA CUBA violated the exclusive rights in the well-known HAVAIANAS trademarks belonging to their Brazilian owner. The decision further held the defendant liable for unfair competition, ordered the destruction of the counterfeit goods, the publication of the ruling in 2 national Italian newspapers, the payment of a penalty for each future infringement and the payment to the claimant of 100.000 Euros in compensation for damages as well as the legal costs.

                             

 

Background

The case relates to the well-known HAVAIANAS marks for flip flops and other class 25 goods owned by the São Paulo-based company, ALPARGATAS s.a., the claimant.

 

The defendant, ASIAN TRADE S.r.l., that had filed, amongst others, Italian trademark application No TO2011C001761 for the HAV@NA CUBA (fig.) application below, was importing and marketing flip flops in Italy under marks containing the words HAVANA and CUBA for goods that imitated exactly all the aesthetic characteristics of the claimant’s goods.

 

                                                   

Decision

The Turin Court agreed with the claimant that the HAVAIANAS flip flops enjoy a widespread reputation in Italy and that the defendant was clearly liable for acts of unfair competition and infringement of the HAVAIANAS trademarks.

 

As a consequence, the Court declared the Italian trademark HAV@NA CUBA (fig.) null and void for all goods in class 25. In addition, the Court established that the use by ASIAN TRADE of marks containing the terms HAVANA (or HAV@NA) and HAVANA CUBA violated the claimant’s prior trademark rights in HAVAIANAS. The decision also held the defendant liable under Article 2598 of the Italian Civil Code for having slavishly imitated its competitor’s products and thus creating confusion on the market, and ordered the destruction of the counterfeit goods. In addition, the Court ordered the defendant to abstain from all further production and commercialization of class 25 products bearing the words HAVANA (or HAV@NA) or HAVANA CUBA and established a penalty for each future infringement. Furthermore, the Court ordered the plaintiff to pay 100.000 Euros to the Brazilian company in compensation for damages as well as to pay the latter’s legal costs and the publication of its ruling, in a double-sized character, in the national Italian newspapers la Repubblica and Il Corriere della Sera.

Posted by: Edith Van den Eede @ 19.15
Tags: Italy, trade mark infringement, counterfeit, unfair competion, slavish imitation, turin business court, damages,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA3862

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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