In a February 13 2017 judgment, EU Trademark Court Number 2 of Alicante upheld the lawsuit filed by Guccio Gucci, SpA, Hugo Boss Trademark Management GmbH & Co KG, Lacoste SA, Procter & Gamble International Operations SA and HFC Prestige Products SA against Spanish company Equivalenza Retail, SL.

Facts

The lawsuit was filed against Equivalenza for its use of trademarks belonging to the brand houses Hugo Boss, Gucci and Lacoste in its sale of alleged smell-alike perfumes. The trademarks were included in the so-called 'comparison lists' supplied by Equivalenza to its distributors and clients, which linked the numerical references of the smell-alike perfumes with the genuine perfumes' trademarks. The trademarks were also referred to orally in the sales speech used in Equivalenza's chain of stores.

Equivalenza had already been sentenced for its use of third-party trademarks in a January 14 2015 EU Trademark Court Number 1 judgment (confirmed by the Alicante Court of Appeal), which was a result of the lawsuit filed by Carolina Herrera Limited, Puig France SAS and Antonio Puig SA (for further details please see "Court finds unlawful trademark use in smell-alike perfume case"). However, despite this first conviction, Equivalenza did not change its business model, although it did take steps to make its use of comparison lists harder to prove. As such, it was proven in the present case that Equivalenza had provided the comparison lists to its distributors so that they could make the link between the plaintiffs' brand and their products, while simultaneously telling them that:

  • use of the trademarks was prohibited; and
  • they must memorise the corresponding references.

Despite Equivalenza's attempts to argue that it had changed its business model concerning the sale of perfumes through olfactory families, the judge held that it had been proven that Equivalenza was the source of the comparison lists.

Decision

According to the judgment, Equivalenza's actions had infringed the plaintiffs' well-known trademarks, as it had effectively been free riding on the reputed trademarks and taken unfair advantage of their reputation, attractiveness and prestige. In addition, the court declared that such use of the trademarks of famous perfumes to sell smell-alike perfumes amounted to acts of unfair competition – namely, taking unfair advantage of another party's reputation in the market and conducting unlawful comparative advertising by presenting its products as imitations or replicas of the plaintiffs' perfumes.

Consequently, the court ordered Equivalenza to:

  • cease and desist offering, marketing and promoting its perfumes using the plaintiffs' trademarks;
  • withdraw from the market, destroy and stop supplying any of the materials, comparison lists or means of identification containing the plaintiffs' trademarks;
  • refrain from providing its shops with any material containing the plaintiffs' trademarks; and
  • change the numerical references of the perfumes that it had used in conjunction with the plaintiffs' trademarks.

Further, the court ordered Equivalenza to:

  • compensate the plaintiffs financially and pay damages;
  • publish the judgment in two Spanish newspapers; and
  • pay the costs of the proceedings.

Comment

The recent judgment added to the sentences of the previous judgment, as it also ordered Equivalenza to change the numerical references of the perfumes that it had used in conjunction with the plaintiffs' trademarks. This was based on the fact that its long-term use of numerical references associated with the plaintiffs' brands had established an association in the mind of consumers and thus taken undue advantage of the well-known character of the plaintiffs' trademarks.

This judgment is not final and can be appealed before the EU Trademark Court of Appeal of Alicante.

For further information on this topic please contact Julia Carretero at Grau & Angulo by telephone (+34 93 202 34 56) or email (j.carretero@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

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