Gucci and Bottega Veneta victorious as court alters judgment against importer

In August 2010 the Maritime and Commercial Court ordered two fashion houses to pay compensation to an importer that they had accused of marketing counterfeit goods and trademark infringement. Gucci and Bottega Veneta International SARL believed that items marketed by Danish fashion importer Nielsen were counterfeit. The plaintiffs obtained a search order and seized a number of purses, belts, shoes, boots, gloves and handbags.

Although the court found for the plaintiffs on two counts, it rejected most of the infringements alleged by Gucci, instead finding for Nielsen (for further details please see "Fashion companies lose trademark infringement case against importer").

In December 2012 the Supreme Court made a number of alterations to these decisions (Guccio Gucci SPA v Handelsselskabet Rudi & Harald Nielsen A/S, Handelsselskabet Rudi & Harald Nielsen A/S v Bottega Veneta International SARL and Bottega Veneta International SARL v Handelsselskabet Rudi & Harald Nielsen A/S, Supreme Court Cases 241/2010, 277/2010 and 321/2010, December 7 2012).

The court confirmed that Nielsen had been acting in violation of the Marketing Act when selling bags which were imitations of Bottega Veneta's bags. The court found that, regardless of minor differences, the bags sold by Nielsen were slavish imitations of the Veneta bag's distinctiveness and were thus found to be confusingly similar. The court increased the compensation and damages to be paid to Bottega Veneta from Dkr30,000 to Dkr75,000.

In relation to the design of two types of shoe, the Supreme Court stated that, although no trademark violation had taken place, the combination of horsebit and webbing which had been made implied such an intentional, extensive free ride on Gucci's reputation that Nielsen had committed actionable violation of Section 1 of the act. The court further remarked that Nielsen had not substantiated that Gucci had displayed inactivity towards the mentioned combination in relation to shoes such that it should lose its right to the design. The court consequently ordered Nielsen to pay Dkr5,000 to Gucci.

The same applied in relation to the gloves. The Maritime and Commercial Court had found that Gucci had trademark protection, but that its rights had lapsed due to passivity. The Supreme Court found that Gucci did not have trademark protection in the relevant class, but that Nielsen had been acting in violation of Gucci's rights according to the act (for the same reasons mentioned above). The court also found that Gucci had not displayed inactivity and ordered Nielsen to pay Dkr15,000 to Gucci.

Gucci had obtained an injunction for a number of products, in relation to some of which the injunction was found to be unjustified. The Maritime and Commercial Court had ordered Gucci to pay Dkr200,000 as damages, but the Supreme Court reduced this amount to Dkr150,000.

The Maritime and Commercial Court had ordered Gucci and Bottega Veneta to pay Dkr140,271 as costs for transcripts and trial bundles, among other things. The Supreme Court reduced this amount to Dkr75,647.

The Supreme Court found that Gucci's rights had not lapsed due to passivity, although the imitations had been in the market for a number of years. Arguably, this may be explained due to a general reluctance by the Supreme Court to accept passivity in cases where the violating actions have been made intentionally with the purpose of obtaining a free ride on the reputation of the opposite party.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen