Spirits company successfully enjoins use of marks for clothes
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In the long-running dispute between Bacardi & Company Limited and Michael Kleanthis & Sons OE, Bacardi has obtained an injunction preventing Kleanthis from using the MARTINI marks (Decision 30935/2010, October 21 2010).
Kleanthis, a Greek company located in Thessaloniki, is active mainly in the apparel and clothing industry. Bacardi owns various national, Community and international registrations for the MARTINI marks covering alcoholic drinks and related products in Classes 32, 33 and others of the Nice Classification, and also goods in Class 25 (clothing). The parties had been involved in various administrative and civil disputes, which had supposedly been settled by the execution of a settlement agreement.
Bacardi became aware that, notwithstanding the settlement agreement, Kleanthis had continued to use the MARTINI marks without authorisation (including in domain names) during and beyond the grace period provided for by the agreement. Bacardi thus initiated legal proceedings, alleging infringement of its trademark rights and breach of the settlement agreement.
Kleanthis claimed that it had used the marks in compliance with the clauses of the agreement.
The court, after examining the voluminous evidence before it and the lengthy submissions of the parties, determined that Kleanthis had infringed Bacardi's rights and breached the agreement. The court thus ruled in favour of Bacardi and enjoined any use of the MARTINI marks, both online and offline, that fell outside the scope of the agreement. In doing so, the court recognised that:
- the MARTINI marks are well known; and
- the scope of protection of the marks covers not only drinks and related products in Classes 32 and 33, but also clothes and apparel in Class 25 (Bacardi had obtained trademark protection for Class 25 goods in Greece and had proved commercial use in various jurisdictions).
The court also confirmed that online/domain name use is equivalent to market/trademark use, given the nature of everyday transactions within the Greek territory. The court highlighted the importance of enjoining the use of the marks both online and offline in order to protect Bacardi’s rights effectively. The court, despite Kleanthis' assertions that the domain names at issue were inactive, determined that the registration and continued use of the domain names - whether or not they were active at the time of trial - were infringing. The court thus rejected, in a clear and elaborate manner, a frequently used line of defence in similar matters.
Eleni Lappa, Drakopoulos Law Firm, Athens
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