Court finds EVIDENCE of confusion in underwear case

In Eminence SAS v DMD Fashion BVBA (Case 9393/04, December 19 2006), the Brussels Commercial Court has upheld a complaint against the defendant's use of the mark EVIDENCE for underwear.

Eminence SAS manufactures and markets underwear in Class 25 of the Nice Classification under the word mark EMINENCE. It also owns several Community trademark and international registrations of that word mark.

In 2003 DMD Fashion BVBA started to market underwear in Belgium under the word mark EVIDENCE. It also filed that trademark with the Benelux Office for Intellectual Property in connection with underpants, boxer shorts and undershirts in Class 25.

In 2004 Eminence challenged said use and registration before the Brussels Commercial Court, arguing that there exists a likelihood of confusion between the EVIDENCE sign and the EMINENCE mark. The court considered that the degree of aural similarity is decisive in relation to a product such as underwear because, when worn, underwear is usually not visible to the public at large.

It stated that there is a very high degree of aural similarity between the conflicting signs, referring to:

• the identical accentuation;
  
  
• the fact they share the same number of syllables; and
  
  
• the common 'ENCE' suffix.

The court also noted that the use of sub-brands (ie, trademarks that derive from a principal mark and which share with it a common dominant element) for different clothing lines is common in the clothing business. It concluded that consumers who place their trust in an imperfect picture of the EMINENCE and EVIDENCE marks will easily be led to believe that the respective underwear comes from economically-linked undertakings.

In the light of the likelihood of confusion between the conflicting signs, the court ordered the cessation of the use of the EVIDENCE trademark under threat of a penalty as well as the deletion thereof from the Benelux trademark register.

Nicolas Clarembeaux, Altius, Brussels