Company loses mark after sending cease and desist letter

Germany
The Munich Appeal Court has confirmed that there was a likelihood of confusion between the mark DI GIOIA and the earlier trademark ACQUA DI GIÒ (Cases 29 U 1031/11 and 29 U 1420/11, July 21 2011).
 
In spring 2010 L’Oréal launched a new fragrance under the name Acqua di Gioia in Europe. MG Demand Holding AG, the owner of the trademark DI GIOIA (registered in 2002), addressed a cease and desist letter to one of L’Oréal’s distributors in Germany requesting that they immediately stop distributing the perfume and destroy all Acqua di Gioia perfume bottles in stock. The company argued that ACQUA DI GIOIA was confusingly similar to DI GIOIA, since the element ‘acqua’ (‘water’) was devoid of any distinctive character and could not prevent confusion between the two marks.
 
Only seven days after receiving the letter, L’Oréal obtained a preliminary injunction from the Munich District Court prohibiting MG Demand Holding from sending further warning letters to retailers. Moreover, L’Oréal obtained an injunction prohibiting MG Demand Holding from using its own DI GIOIA mark. The injunction was based on L’Oréal’s earlier trademark ACQUA DI GIÒ, registered in 1996.
 
In the main proceedings, the Munich District Court confirmed this position in separate decisions issued in December 2010 and March 2011. Moreover, MG Demand Holding was ordered to consent to the cancellation of its German trademark DI GIOIA before the German Patent and Trademark Office.
 
These decisions have now been confirmed by the Munich Appeal Court, which rejected MG Demand Holding’s appeal on July 21 2011. The Appeal Court upheld the decisions and findings made at the first instance, according to which MG Demand Holding’s DI GIOIA mark was confusingly similar to L’Oréal’s earlier ACQUA DI GIÒ mark.
 
Moreover, the Munich Appeal Court declined to grant leave to appeal to the Federal Supreme Court. However, the Appeal Court’s decisions are not yet final, as MG Demand Holding has appealed against the denial of leave to appeal to the Federal Supreme Court.
 
Pascal Böhner, Bardehle Pagenberg, Munich
 
Bardehle Pagenberg represented L’Oréal in this case

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