Community Trademark Court of Appeal finds infringement of 'Armani eagle'

On March 6 2014 the Community Trademark Court of Appeal issued a sentence confirming a previous decision of the Alicante Commercial Court Number 2 which had:

• revoked Spanish trademark No 2.655.598;
• found that there was a likelihood of confusion between the trademark and the ‘Armani eagle’;
• found that the ‘Armani eagle’ was infringed;
• ordered that most of the defendants pay damages to Armani; and
• ordered that most of the defendants pay the court costs.

Armani owns Community trademark No 504.308, which covers the ‘Armani eagle’, for goods in Classes 3, 9, 14, 18 and 25 of the Nice Classification:

The defendants were different people and companies involved in the import and trade of goods (eg, sunglasses) bearing a very similar logo, which Armani claimed was confusable with the ‘Armani eagle’ - a registered Spanish trademark.

The Alicante court granted a preliminary injunction, which the Community Trademark Court of Appeal confirmed.

The Alicante court issued a first-instance decision in the referred terms, which was appealed only by Novedades Import-Export, SL - the importer of 109,500 pairs of sunglasses bearing the infringing trademark.

Novedades Import-Export argued that there was no likelihood of confusion because there were denominative, phonetic and graphic differences between the logos. Even if the infringing trademark were revoked, Novedades Import-Export claimed that it could not be sentenced to indemnify the damages because the Alicante court had not found that Novedades Import-Export had acted in bad faith or that the Spanish trademark owner had acted in bad faith. It also argued that a final and binding decision on the matter had already been issued (res judicata), because there was a prior decision of the Madrid Criminal Court of Appeal relating to other defendants in the proceedings which had dismissed the criminal action filed by Armani against them.

Armani counter-argued that the logos should not be examined in parts, but rather from their overall general impression, which was the same in this case. Furthermore, the differences mentioned concerned secondary aspects only. Armani also argued that recent Supreme Court case law holds that there is infringement (and damages) of well-known trademarks not only in cases of revocation of a trademark registered in bad faith, but also in cases of revocation due to a likelihood of confusion. Finally, Armani argued that there is no res judicata between different jurisdictions.

The Community Trademark Court of Appeal upheld all of Armani's arguments and stated that the ‘Armani eagle’ was a well-known trademark. Both the Armani Eagle and the infringing trademark were essentially graphic logos. Thus, although there were small differences resulting from secondary aspects of these logos, these were not sufficient to produce a different impression. Accordingly, the court found that there was a likelihood of confusion.

Regarding the infringement and the damages derived therefrom, the court stated, contrary to what Novedades Import-Export had argued, that the trademark had been revoked and the revocation had ex tunc effect, meaning that the owner never had any right over the logo protected under that trademark. Consequently, the court declared that Armani's trademark had been infringed, and that the damages caused by that infringement had to be indemnified.

Regarding the argument based on res judicata, the court stated that there cannot be res judicata between two different jurisdictions (ie, criminal and civil) due to the fact that their perspectives of the same facts are different. Furthermore, the court held that the sentence issued in the prior criminal proceedings clearly established that, in order to succeed against the defendants, Armani had to go to the civil jurisdiction and request revocation of the controversial trademark, which is exactly what Armani had done.

Finally, the Community Trademark Court of Appeal sentenced Novedades Import-Export to pay the court costs of the appeal.

Novedades Import-Export had 20 days to file a cassation appeal against this sentence.

Ana-Laura Morales, Grau & Angulo, Barcelona