Tiffany, Chanel or Inditex are some of the major groups in the fashion industry that have filed lawsuits in court to defend the use of their trademark.
“We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family.” With humor. This is how the German luxury fashion company responded to the initiative of the English comedian to change his first name to the one of his company that he founded in 1924, Hugo Ferdinand Boss. However, when instead of a comedian it is about other companies, the battle usually ends in court. Chanel, El Corte Inglés or Hugo Boss himself are some of the firms that have fought for his name in court.
In 2018, Tiffany took a British company specialized in eyelash extension to court. Then, a woman named Tiffany Parmar wanted to register the name of her small business under the Costwold Lashes by Tiffany label that she later renamed Beaty by Tiffany.
This decision did not please one of the largest American luxury groups, which in October 2018 filed a formal opposition to the United Kingdom Intellectual Property Office (Ukipo) claiming that its registered trademark was “very similar” to its own brand in the United Kingdom and Europe registered as Tiffany & Co, which extends to cosmetic and perfume products. Ukipo concluded that there was a “probability that consumers are directly or indirectly confused” and the businesswoman decided to back down.
Chanel also won a lawsuit to the owner of the beauty salon Chanel Jones. The French group controlled by the Wertheimer brothers filed a lawsuit in August 2014 after the businessman dismissed the option to stop using Chanel in the name of his establishment. Finally, it was the magistrates who forced Jones to eliminate Chanel from his business before February 15, 2015, alleging that “the use of the word Chanel was a violation of the rights of the registered trademark”.
The English Court or Grupo Íllice are other Spanish companies that have fought in court for the registration of their trademark
Inditex has also tried to shield the Zara brand with various lawsuits. After litigating with Zarina or Zaratous , in 2017 the Superior Court of Justice rejected its latest lawsuit, which aimed to cancel the registration of the Zaravan brand because of its similarity to the company’s star chain, Zara. On this occasion, the Court ruled that “there is no risk of confusion” regarding the company specializing in repair and interior equipment of caravans and vans, Zaravan. In 2014, Inditex got the Supreme Court to annul the Viajes Zaratours brand, and in 2008 the Zaratos brand, a shoe sales company. Two years later, the company took Zarina Perfumerías to court, but in this case the Supreme Court ruled against the Galician group.
Within the national territory, El Corte Inglés lost, in December 2016, the legal battle against the Malaga brand The English Cut. On this occasion, the General Court of the European Union dismissed the appeal of the Spanish department store company and concluded that The English Cut brand “does not harm” that of the department store group.
Also, in Spain, Grupo Íllice won the Lacasa chocolate group in October 2019 in the use of the Conguitos brand for the textile and footwear category. The origins of this judicial conflict date back to the 1990s when the Illegal company requested the registration of the Conguitos brand in the Spanish Patent and Trademark Office in 1989, and a year later it was granted for the textile and footwear class. Both companies lived together peacefully for years, but in 2016 Lacasa sued Íllice alleging infringement of its Conguitos brands for the sale of textile products and shoes.
Penneys became Primark in 1974 when it began its international leap to avoid problems with the American JC Penney
Another battle in defense of the trademark had as protagonist the mythical NBA player, Michael Jordan. In 2016, the basketball player denounced the Chinese company Qiodan Sports for matching his characters in Chinese with those of the athlete’s name. Then, justice gave Jordan the reason and forbade the Chinese group to use this denomination, although it allowed him to continue using the mark in romanized characters.
In the United States, 2020 has begun with another legal dispute over the use of a registered trademark. Brooks Sports sued Brooks Brother Group in the United States Federal Court in early February for using its registered trademark. Until then, both companies maintained a coexistence agreement that allowed them to use their brands in the same markets. The sports company broke the pact after the fashion company incorporated the word Brook into its stores and products.
Dodging these types of problems is what motivated the name by which the foreign public knows today the Irish low-cost fashion chain Penneys. For its international leap in 1974, the company changed its name to Primark to avoid problems with the US group JC Penney. Today, the company maintains its historical name in Ireland and operates under the name of Primark in the rest of the world.
The last attempt to supplant the brand identity has been a joke that, on this occasion, Hugo Boss has decided not to raise the courts. However, the comedian’s decision was precisely in response to the new actions that the group has carried out with companies for the use of the Boss brand, the last one against the Boss Black brewing group.