European Union: Brussels Court of Appeal confirms EU-wide injunction in favour of fashion company Kadine BV prohibiting infringing EU sales by Fear of God LLC

In brief

By a final judgment of 25 October 2021, the Brussels Court of Appeal confirmed the EU-wide injunction that was previously imposed by the EU Trademark Court in Brussels against the US company Fear of God LLC for infringing the Benelux trademark ESSENTIEL and the EU trademark ESSENTIEL ANTWERP of the Belgian fashion company Kadine BV.

Background

Kadine BV is the owner of the fashion brand ESSENTIEL / ESSENTIEL ANTWERP, which started in 1999 and enjoys trademark protection in the Benelux and the EU. The US company Fear of God LLC ("FOG") is the owner of the streetwear label FEAR OF GOD, which started in 2016. In 2018, FOG launched a new sub-brand 'FEAR OF GOD ESSENTIALS'. The clothing prominently features the sign 'ESSENTIALS', sometimes supplemented by the subscript 'Fear of God'.

When FOG started selling its 'ESSENTIALS' clothing line in the EU through its international online distributor, Kadine brought a cease-and-desist action on the merits before the EU Trademark Court in Brussels against FOG and its distributor. By a judgment of 13 February 2020, the EU Trademark Court in Brussels issued a Benelux-wide injunction for trademark infringement and unfair practices against FOG's distributor. It however dismissed Kadine's claim against FOG because Kadine had not proven that FOG was selling or distributing the infringing goods in the Benelux or that its advertising on social media was specifically targeting the Benelux public.

Shortly after the EU Trademark Court in Brussels had handed down its decision, FOG launched a new collection of 'ESSENTIALS' clothing (including a sneaker made in Italy) which it advertised on its website, thereby also making direct offers and sales to consumers in the EU and the Benelux. FOG had moreover increased its commercial efforts by appointing five new online distributors who were directly targeting the EU market, some of which also collaborated with Kadine. Following this, Kadine launched summary proceedings against FOG before the EU Trademark Court in Brussels to obtain an EU-wide injunction.

Decision

By a decision of 11 December 2020, the EU Trademark Court in Brussels sided with Kadine and found that FOG was directing advertising and offers for sale of identical goods under the highly similar sign ESSENTIALS to EU consumers, which amounted to a likelihood of confusion and infringement of Kadine's EU trademark rights.

The fact that FOG had made certain adjustments on its website (namely the removal of precisions aimed at consumers located in the Benelux and the removal of the possibility to place an order from the Benelux) did not alter the fact that the advertising and sales offers on its website still targeted EU consumers. In addition, the fact that FOG offered a sneaker made in Italy on its website also constituted an infringement of Kadine's EU trademark rights. Finally, Kadine had produced correspondence with some of FOG's online distributors, which showed that FOG in fact controlled the sale of 'ESSENTIALS' clothing in the Benelux and the EU through intermediaries. The EU Trademark Court decided on this basis that there was a clear use by FOG of the confusingly similar sign 'ESSENTIALS' in the EU and therefore an infringement of Kadine's EU trademark rights.

When balancing the interests of both parties, the EU Trademark Court found that FOG's freedom of trade does not outweigh the imminent damage that Kadine might suffer if the distinctive character of its trademarks is diminished by the continuation of the infringement by FOG on the EU market.

Consequently, the EU Trademark Court in Brussels imposed an EU-wide injunction on FOG, prohibiting FOG and its intermediaries from selling clothes, shoes and accessories under the sign 'ESSENTIALS', both individually and in conjunction with the subscript 'FEAR OF GOD' or 'FOG', in the whole of the EU, subject to a daily penalty per infringement per day.

FOG immediately lodged an appeal against the EU Trademark Court's summary judgment. By a final judgment of 25 October 2021, the Brussels Court of Appeal has dismissed the appeal and has confirmed the EU-wide injunction against FOG.

The first instance decision (in Dutch) can be read here. The appeal decision (in Dutch) can be read here.