Hotel chain successfully enjoins use of its mark for clothing
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The Court of Appeal of Thessaloniki has granted a request for a permanent injunction by Marriott Worldwide Corporation, the renowned hotel operator, preventing Marriot Ltd, a Greek trader of clothing, from using the MARRIOTT mark in association with clothing (Decision 1240/2010, January 11 2011).
Marriot Ltd registered the word ‘Marriot’ as its trade name with the Greek Companies Registry in June 1996. In addition, it had allegedly been using, since June 1996, the figurative sign ‘Marriott’ (in the same stylized font as that used by Marriott Worldwide):
- as its trade name, which appeared in all its business correspondence;
- on the shop front of its retail outlets; and
- as a distinctive sign for its clothing goods.
Marriott Worldwide initiated proceedings against Marriot Ltd, seeking an injunction preventing any use of the indications ‘Marriott’ and ‘Marriot’, as well as moral damages, under the trademark and unfair competition legislations. It relied on various Greek and Community registrations for the word and figurative mark MARRIOTT, which were dated as early as 1993. Among these trademarks, the only one covering clothing in Class 25 of the Nice Classification was a Community trademark (CTM) filed in April 1996 and registered in 1998.
In its defence, Marriot Ltd raised the following objections:
- The CTM covering clothing in Class 25 was not enforceable against it, since Marriot Ltd's rights predated the date of registration of the CTM;
- In view of the strong dissimilarity between clothing on the one hand, and the goods/services covered by Marriott Worldwide's remaining marks on the other hand, any risk of dilution of Marriott Worldwide's reputation was ruled out; and
- In any event, no incidence of consumer confusion or injury to Marriott Worldwide's reputation had taken place since 1996.
The Court of Appeal ruled as follows:
- A registered CTM is protected vis-à-vis third parties retroactively as of the filing date; since the filing date of Marriott Worldwide's CTM in Class 25 predated any user right (allegedly) acquired by the defendant, the CTM was enforceable.
- All the trademarks relied on by Marriott Worldwide had enjoyed a reputation in Greece since at least June 1996. Therefore, there was a risk of dilution of Marriott Worldwide's trademarks in the Greek marketplace.
- A finding that there is a ‘risk’ of consumer confusion or that use of a sign takes unfair advantage of the reputation of someone else’s trademark does not require proof of actual confusion or concrete evidence of the financial benefit derived by the defendant.
Based on the above reasoning, the Court of Appeal:
- permanently enjoined Marriot Ltd from using, in any way whatsoever, the MARRIOTT mark, or any variation of it, in the course of trade;
- ordered the seizure and destruction of Marriot Ltd’s products bearing the infringing sign; and
- awarded Marriott Worldwide moral damages and court expenses.
The decision is good news for brand owners - it demonstrates that, even if the infringement has taken place over a considerable period of time, it is still possible for the brand owner to put an end to it.
Manos K Markakis, Dontas Law Offices, Athens
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