BAHIANAS held to be confusingly similar to HAVAIANAS

In Sao Paulo Alpargatas SA v Secret Spot SL (Case V-99-07, January 27 2009), the Danish Maritime and Commercial Court has held that there was a likelihood of confusion between the marks HAVAIANAS and BAHIANAS for sandals.
Sao Paulo Alpargatas SA owns a Danish registration for the device mark HAVAIANAS (Registration VR 1994 08865), as well as a Community trademark (CTM) registration (Registration 03772431). Approximately 2.2 million Havaianas sandals are sold worldwide every year. In the Scandinavian countries, 100,000 Havaianas sandals are sold every year.
The name Havaianas comes from the Portuguese (it is the name of a tribe from Hawaii). Havaianas sandals have been promoted by celebrities such as Naomi Campbell and Nicole Kidman, and have been advertised is magazines such as Elle and Eurowoman.
Secret Spot SL began exporting similar sandals into Denmark from Spain. An individual, Enrique Fisher, applied for the registration of BAHIANAS as a CTM for shoes on July 18 2008.

Sao Paulo Alpargatas alleged that it was asked whether it had started to sell cheaper sandals during a fashion show in August 2007. The original Havaianas sandals cost between Dkr179 and Dkr250, while the Bahianas sandals cost Dkr149.

Sao Paulo Alpargatas filed suit against Secret Spot in Denmark. Secret Spot also filed similar lawsuits in Spain and Brazil, and opposed the registration of BAHIANAS as a CTM before the Office for Harmonization in the Internal Market.

Sao Paulo Alpargatas argued that:
  • the HAVAIANAS mark is clearly distinctive and thus deserves stronger protection; 
  • the marks are used for identical goods; and
  • the marks consist of four syllables (in Danish pronunciation) and have the same ending.
Secret Spot recognized that the goods were identical, but claimed that the marks were not confusingly similar. In particular, Secret Spot argued that:
  • the first letter of the marks (ie, 'H' and 'B') are different;
  • consumers will consider that the marks are fanciful words or indicate a geographical origin (ie, Hawaii or Havana for HAVAIANAS, and Bahia for BAHIANAS); and
  • the fact that the marks have the same ending has little importance, as consumers notice mainly the first syllable of a trademark.
The court held as follows:
  • Both parties use their marks for sandals;
  • Even though the HAVAIANAS mark is a device mark, the dominant element of the mark is the word 'Havaianas';
  • Both marks have four syllables in Danish pronunciation and share an identical ending; and
  • Therefore, Secret Spot's mark is confusingly similar to the HAVAIANAS mark.
The court concluded that Secret Spot had violated Section 4(1)(2) of the Danish Trademarks Act, and ordered that the latter pay damages in an amount of Dkr50,000 and costs in an amount of Dkr40,000.
However, the court rejected the claim that Secret Spot had infringed a three-dimensional mark consisting of the shape of the sandals, holding that such shape was functional. 
Christian Levin Nielsen, Zacco, Copenhagen

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