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'V' for Armani in Dutch sunglasses case

G.A. Modefine S.A. - a Swiss company - owns the 'Georgio Armani' trade mark rights, amongst which the CTM for the figurative trade mark to the left registered for inter alia glasses (class 9). The same trade mark is also protected by an international registration which covers optical apparatus and instruments (class 9) and clothing and hats (class 25). Nisu - a Dutch company - is a wholesaler of sun glasses, jewelry, umbrellas and other accessories. On October 24, 2006 the Dutch customs intercepted 240 sunglasses with a sign that can be seen on the pictures of the glasses in this posting. Because Modifine did not start infringement proceedings within 10 days (art. 13 EC Customs Regulation No 1383/2008) the customs released the shipment. However Modifine send a cease and desist letter to Nisu. Nisu responded denying the alleged infringement. Not much later - early 2007 - Modifine had to send another cease and desist letter to Nisu concerning a shipment of 2400 sunglasses, followed by a seizure with the court's permission for a shipment of 2400 respectively 2700 sunglasses. Nisu offered these sunglasses on the market as part of its SAY and KOST collection. Modefine brought legal action - a procedure on the merits - before the District Court of The Hague (presided by G.R.B. van Peursem, P.W. van Straalen and P.G.F.A. Geerts), demanding an infringement injunction, a report with regard to the infringements, a recall, an abandonment of the infringing sunglasses, and an order to pay all Modefine's costs (€ 25,504.14). The case was decided on December 3, 2008.

The most far reaching defense of Nisu is that Modefine forfeited its rights to take legal action. Nisu based this defense on the fact that the first shipment of sun glasses was released by customs because Modefine did not start infringements proceedings. Art. 9 of the EC Customs Regulation 1383/2003 does not impose a special obligation of care on the trade mark owner. Furthermore the Court finds that Modefine has not been inactive. On the contrary: Modefine took action against the first shipment by sending a cease and desist letter, followed by another cease and desist letter with regard to the other shipments. The Court comes to the conclusion that Modifine did not do anything that could give rise to (protection of) confidence on Nisu's side that Modifine would not assert its trade mark rights. The defense fails also in so far as Nisu argued that Nisu is unreasonable harmed because she had not a possibility to sell the sun glasses, that Modefine had not given an opportunity to refrain from import of the sun glasses and that Nisu has been confronted with expensive proceedings. The Court finds that Nisu should have been aware of legal action after receiving the first cease and desist letter: Nisu could have anticipated to such action.

With regard to the trade mark infringement itself the Court rejects Nisu's embellishment defense following the ECJ's 2008 decision in Adidas/Marca and H&M: the fact that the relevant public considers a sign to be an embellishment can not be an obstacle to grant protection under art. 9 par 1 and c CTMR, if such sign, notwithstanding its ornamental character, is similar to trade mark to such an extent that this public may think that the goods concerned are originating from one and the same undertaking or connected undertakings. Crucial is whether the average consumer who notices sun glasses with the Nisu sign can be confused with regard to the origin of those glasses, thinking that those glasses originate from Modefine or its licensees. Important in this regard is not only the degree of similarity between the trade mark and the sign, but also the ease with which the sign can be associated with the trade mark, in particular because of its reputation on the market. The greater the reputation of a trade mark the greater the number of market participants who want to use similar signs.

The Court finds that there is a similarity to a great extent between the CTM and the Nisu sign and reminds that the average consumer will almost never have an opportunity to compare the trade mark and the sign directly, but follows the incomplete image with which he is left. Thus the Nisu sign is almost identical to Modefine's CTM, omitting the letters 'GA' and the head of the 'bird'. These elements do not dominate the overall impression of the trade mark. For the rest the sign and the CTM are identical. Even the ridges of the Nisu sign resemble the trade mark. Furthermore Nisu did not soundly dispute that the CTM is a trade mark with a reputation and that a large number of market participants wants to use the trade mark. Because all of this and because the goods are identical, and also because Nisu did not soundly dispute that the position where she attaches the Nisu sign is the position used by sun glasses manufacturers to attach their trade marks, the Court concludes that the use of the Nisu signs is detrimental to the distinctiveness of the CTM and can harm the essential function of such a trade mark, namely to guarantee to consumers the origin of the goods concerned. Accordingly there is resemblance and risk of confusion. The fact that Nisu offers the sun glasses using the trade mark SAY and Kost and that there is a price difference between the Nisu sun glasses and the Armani glasses is found to be irrelevant. Furthermore the Court comes to the conclusion that the scope of protection of the CTM is accordingly not stretched to the letter 'V': Nisu forgets that its sign, if that would be a 'V', is designed in a special way. For that very reason - the special design of the 'V' - the Court decides that the trade mark and the resemble each other to a great extent.

Accordingly the Court grants Modefine's claims almost all. A clear 'V' for Armani.

Posted by: Gino Van Roeyen @ 08.54
Tags: Armani, community trade mark, Community trade mark courts, community trade mark infringement, Netherlands, sunglasses,
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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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