The Amsterdam District Court has decided that H&M infringed
the trade mark rights of Jeans Centre by selling sweaters on which
the sign CHIEF was displayed in large capitals (see above). The
H&M sweaters also had an image of a native American and the
number "17" below the word CHIEF.
Jeans Centre based its claims on Article 2.20 paragraph 1(a) of
the Benelux Convention on Intellectual Property ('BCIP'),
which is the equivalent of Article 9 paragraph 2 (a) of the EU
Trade Mark Regulation. According to Jeans Centre, the CHIEF sign
used by H&M is identical to the word trade mark CHIEF since it
reproduces, without any modification or addition, all the elements
constituting the trade mark or where, viewed as a whole, it
contains differences so insignificant that they may go unnoticed by
an average consumer.
H&M denied that the CHIEF sign is identical to Jeans
Centre's trade mark since the used sign also consists of the
image of a native American as well as the number "17".
According to H&M these other signs will be immediately noticed
by the average consumer and therefore will not go unnoticed. The
Amsterdam District Court however ruled in favor of Jeans Centre
arguing that the CHIEF sign is visually the most dominant sign on
the H&M sweaters. Since the other signs are displayed
separately and do not consist of words, the Court came to the
conclusion that the CHIEF sign has a separate distinctive position
on the sweater. Since consumers, according to the Court which was
not disputed by H&M, are used to the fact that trade marks are
often used in combination with other visual elements, these other
visual elements can go unnoticed in the global assessment made by
the average consumer. Therefore, the Court came to the conclusion
that H&M infringed Jeans Centre's trade mark and ordered
H&M inter alia to cease the infringement and pay damages and
also the full legal costs (EUR 37.087,71) of Jeans Centre.
It will be interesting to see what will happen if H&M
appeals this decision and argues that the use of the CHIEF sign was
not used in respect of goods or services but merely as a
decoration. Furthermore, it will also be interesting if this use of
the CHIEF sign can affect or be liable to affect the functions of
the trade mark owned by Jeans Centre, in particular its essential
function of guaranteeing to consumers the origin of the goods or
services. Given the circumstances in this case there might be good
reasons for H&M to appeal the decision of the Amsterdam
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The future of the European Unified Patent Court (UPC) appears to look a bit clearer following recent ratification activities. On 16 January 2017, the Preparatory Committee for the UPC announced on its website that it is working under the assumption that the UPC can become operational in December 2017.
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