Max Mara sues but loses its own marks

Denmark

The Maritime and Commercial Court in Copenhagen has clarified the amount of evidence needed to prove the use of a registered mark. The court ordered the cancellation of two marks registered by Italian company Max Mara Fashion Group SrL after finding that proof of a few hundred sales to Danish retailers was not enough to maintain the registrations.

Danish company Blues ApS used the marks BLUES and BLUES ORIGINAL in connection with clothing, footwear and headgear. Max Mara filed for trademark infringement on the grounds that the registration of its marks I BLUES and BLUES CLUB covered identical goods. Max Mara also sought to cancel the domain name 'bluesoriginal.dk', which had been registered by Blues. Blues counterclaimed that Max Mara's marks should be cancelled as they had not been used in Denmark for a continuous period of five years.

On the trademark use issue, the court found that as (i) Max Mara sold only a few hundreds of articles to Danish retailers under the BLUES CLUB and I BLUES marks between 1995 and 2000, and (ii) there was no documentation of resale to consumers, there was insufficient evidence of real use of the marks. Furthermore, the court found that Max Mara had presented no legitimate reasons for not using its marks.

On the infringement issue, the court found that the mark BLUES ORIGINAL was confusingly similar to I BLUES and BLUES CLUB, as (i) the marks covered the same goods, and (ii) 'Blues' was the dominant part of each mark. However, the court did not find infringement as Max Mara had not fulfilled the trademark use requirement. Instead, the court ordered that the registrations of I BLUES and BLUES CLUB be cancelled.

Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen

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