GRUPO KNY held to infringe well-known DKNY mark
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The Alicante Community Trademark Court has found two Spanish companies liable for the infringement of the Community trademark DKNY (Case 82/2008, June 2 2008).
US companies Gabrielle Studio Inc and The Donna Karan Company LLC filed suit against the defendants for trademark infringement and unfair competition. They alleged that the defendants:
- marketed a line of bags and leather goods bearing the marks GRUPO KNY and KNY using a typographical combination that was very similar to that of the DKNY trademark; and
- used the same trade dress and commercial image as the plaintiffs.
In assessing the likelihood of confusion between the trademarks, the court held that the goods covered by both marks were identical. In addition, the court found that the marks were similar from a phonetic, visual and conceptual point of view on the grounds that:
- the word 'grupo' in the GRUPO KNY mark was virtually indiscernible; and
- the lettering and visual impact of both marks were similar.
Upon reviewing the facts, the court highlighted that the defendants had carried out no advertising campaigns, whereas the plaintiffs had heavily invested in advertising. Moreover, the court pointed out that the DKNY mark was well-known in the Spanish market.
Based on the foregoing, the court:
- ordered that the defendants cease all use of the KNY and GRUPO KNY marks;
- declared that the KNY and GRUPO KNY marks and the domain name 'grupokny.es' were invalid;
- ordered that the corporate name Grupo KNY Exchange SL be amended;
- held that the defendants had acted in bad faith; and
- ordered that the defendants compensate the plaintiffs for consequential damages and lost profits in an amount exceeding €190,000.
The defendants have appealed the decision.
Luis Baz, Elzaburu, Madrid
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