The eagle has landed: Armani prevails in trademarked logo dispute

Spain

On May 31 2013 the Community trademark (CTM) section of the Alicante Court of Appeal issued a court order confirming a June 12 2012 decision of the Community Trademark Court No 2 that granted preliminary injunctions, as requested by Armani, against several parties in relation to the import and sale of goods adorned with a trademark-protected logo (National Registration 2655598) that was similar to Armani's well-known 'eagle' logo.

Armani owns CTM No 504308, which covers the 'Armani eagle':

The defendants were involved in importing and selling various goods, including sunglasses, emblazoned with a logo that was similar to, and likely to be confused with, the Armani eagle:

On June 12 2012 the Community Trademark Court No 2 issued a court order granting the preliminary injunctions requested by Armani.

One of the defendants, Novedades Import-Export SL, appealed the order. There were two main grounds for the appeal against the first instance judgment.

On the first ground, lack of fumus boni iuris (ie, sufficient legal basis to bring legal action), Novedades alleged that:

  • it held a national registration (2655598);
  • a significant amount of time had elapsed between such registration (granted in 2005) and Armani's nullity request;
  • Armani had failed to file an opposition against the registration before the Spanish Patent and Trademark Office; and
  • there were critical differences between the two logos.

Armani counter-argued that:

  • the principle of ius utendi (the right to use property), as claimed by the defendant, did not enervate Armani's ius prohibendi (the mark owner's right to prohibit its unauthorised use);
  • there is no legal obligation to file an opposition against a national registration before filing a judicial action;
  • the Armani eagle is a well-known trademark; and
  • the two logos were confusingly similar and were used for identical goods.

The court upheld all of Armani's arguments and stated that the so-called 'thesis of immunity by registration' has been superseded by the most recent case law. The court of appeal took into account the Supreme Court decision of April 4 2012 in the GRUPO KNY case and the European Court of Justice ruling of February 21 2013 (C-561/11), which held that the exclusive right of a CTM owner to prohibit any third party from using in trade an identical or similar sign extends to third parties which own a later CTM, and does not require prior or simultaneous filing of a nullity action.

The court of appeal concluded as follows:

"A third party who owns a later trademark which is incompatible with the prior Community trademark can be considered an infringer, without requiring the prior or simultaneous filing of a nullity action."

On the second ground, lack of periculum in mora (ie, danger in delay), Novedades alleged that:

  • a long time had elapsed between the granting of the national registration and the nullity action filed by Armani (which demonstrated tolerance); and
  • the possibility existed of indemnifying Armani for the damages.

Armani counter-argued that:

  • there had been no tolerance on its part; it had been contesting this logo before the criminal jurisdiction since its registration in 2005; and
  • if the court refused to grant the preliminary injunctions, the Armani eagle would suffer irreparable harm to its reputation.

The court of appeal again upheld Armani's arguments in this matter and confirmed the preliminary injunctions granted by the Community Trademark Court No 2.

Novedades also appealed the bond deposited by Armani (€10,000); however, the court considered the amount to be sufficient, as there were several indicia of Armani succeeding in the main proceedings.

Ana-Laura Morales, Grau & Angulo, Barcelona

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