The protection of the dachshund trademark: Thom Browne Inc. vs. Harmont & Blaine S.p.a.
The Milan Court of Appeal recently ruled on the protection of trademarks owned by the company Harmont & Blaine S.p.a., confirming what had already been decided at the Court of First Instance, which had recognised the notoriety of the signs depicting the profile of a dachshund (application no. MI2013C011340 of 12.12.2013; registration no. 1598276 of 9.06.2014; application no. MI2013C011334 of 12.12.2013; registration no. 0001603663 of 12.08.2014; international trademark no. 1249733 registered on 9.06.2014) and the infringement of the same by the company Thom Browne Inc.
The case originates from a preliminary action brought before the Court of Naples in 2017 by Harmont & Blaine, a well-known Italian fashion house, against Thom Browne Inc., a company also operating in the clothing sector in which it markets products bearing the word mark 'Thom Browne' accompanied on some garments by the depiction of a long-haired dachshund representing the designer's pet dog. At the end of the interlocutory proceedings, the appellant saw the infringement of its trademarks portraying the recognisable figure of the dachshund and obtained an injunction prohibiting Thom Browne from manufacturing and selling products bearing similar signs, and also ordering the seizure of those goods and of the relevant accounting documents.
Subsequently, Thom Browne responded by suing Harmont & Blaine in ordinary proceedings before the Court of Milan in order to obtain a negative declaration as to the existence of its own infringing conduct. Furthermore, Thom Browne requested that the defendant be found guilty of unfair competition, which took place when Harmount & Blaine sent warning letters to Thom Browne retailers.
Harmont & Blaine submitted a counterclaim on the merits seeking a declaration that the plaintiff had infringed the defendant's trademarks, bearing the figure of the profile of a dachshund, and an order to pay compensation for the damage suffered. The amount of compensation awarded was to be ascertained pursuant to Article 125 of the Code of Civil Procedure.
At the conclusion of the Proceedings of the Court of First Instance, the Court of Milan, preliminarily rejected the plea of lack of territorial jurisdiction, and declared that Thom Browne Inc., in partnership with an Italian company in its group - Thom Browne Retail Italy S.r.l. - was liable for the infringement of Harmont & Blaine's trademarks bearing the figure of a dachshund - had infringed Harmont & Blaine's trademarks bearing the figure of a dachshund, and ordered the plaintiffs to pay damages and costs, and ordered the publication of the operative part of the judgment. The Court of Milan held that the defendant's registrations of the trademarks relating to the dachshund were officially proven, defined the signs as not weak (in fact, it is a design that is not descriptive of the goods) and recognised the notoriety of the graphic element, which prevailed over the verbal element 'Harmont & Blaine'.
Thom Browne appealed against that judgment, seeking a complete reform of the contested action. First of all, the appellant complained that the Court of First Instance had wrongly based its decision on the finding that the respondent's marks consisted exclusively of the dachshund and did not also take into account the word part 'Harmont & Blaine.’ Furthermore, Thom Browne argued that the Court had also failed to consider how the dog appeared, as a merely decorative element, in the appellant’s mark. On this point, the Court of Appeal again confirmed the reputation of the appellant's trademarks, which have been used as the core of Harmont & Blaine's distinctive signs since the 1990s: it was in fact recognised that this profile of a dachshund, due to the originality of its use to distinguish clothing, is capable of causing a likelihood of confusion or association with the goods of a third party, when an identical symbol is used to distinguish merchandise belonging to the same category of goods. Regarding the comparison between the marks, the Court specified how the assessment of potential confusion must be carried out, not only analytically, through the examination of the individual elements that make it up, but above all holistically, taking into account the average degree of perception of the users for whom the product is intended. It is irrelevant that the appellant used the sign in an ornamental manner, as well as the difference in cost between the products of the two undertakings. The Court maintained that only the perception of the public and the ability to create a link between the parties was considered to be relevant.
With regard to infringement, the Court of Appeal held that the first instance decision had correctly found that the goods marketed by Thom Browne bore the profile of a stylised dachshund essentially identical to that of the appellant's goods and that the differences between the signs (different position of the tail, rounder lines, length of the fur and repetition of the figure) were not sufficient to prevent a likelihood of confusion or association among the public. In fact, according to the Court, the possible association between the signs to which the consumer might be led gives an advantage to the appellant which, by doing so, parasitically attaches itself to Harmont & Blaine's well-known mark and obtains a better position in the market.
Regarding the compensation profiles, which are also the subject of an appeal, the Court of Appeal found the application of Article 125 of the Italian Civil Procedure Code by the Court of First Instance to be admissible. The Court had liquidated the emerging damage based on the out-of-pocket expenses incurred in defence of the trademarks, advertising investments, any documented costs for the past and foreseeable future of a corrective campaign, the value of the patent right before and after the conduct subject to the precautionary measures. Also, for the calculation of the loss of profit, the Court made an equitable assessment based on the evidence in the file: in fact, the plaintiff's failure to fully comply with the order to produce evidence ordered during the preliminary investigation phase of the proceedings at first instance did not allow for the precise calculation of the amount of this item.
The Court also rejected the claim of unfair competition, which according to Thom Browne Inc. was realised through distorted and false communications sent by Harmont & Blaine to its retailers, warning them not to market products bearing the dachshund figure. The Court of Appeal, confirming what had already been decided at first instance, rejected the claim "since no unlawful competitive conduct on the part of Harmont & Blaine had been proven, given the ascertained grounds for its legal actions, nor, even less so, the existence of damage on the part of the plaintiffs".
Further grounds of appeal concerned the failure to rule on the request for a negative finding as to the existence of unfair competition and the order to publish the judgment, both of which were rejected by the Court of Appeal, as well as the assumption that the Court of First Instance had incorrectly applied the criterion of loss of jurisdiction for the award of costs.
For all the above reasons, the Court of Appeal upheld the first instance judgment.
