Brand conflicts: Giordano vs.Giordano |EXPANSION

In recent years, the Giordano Group, an Hong Kong -based clothing retaile.Although the Giordano Group has never made a real use of the Giordano brand in Europe, an end confirmed by judges and brand records in several European jurisdictions, the Giordano group tries to avoid that Verweij Fashion uses the Giordano brand, brand that Verweij FashionHe has been using in several European countries since 1989.

Recently, the English High Court issued a decision in one of the nearly 60 open judicial cases between the parties in Europe (case [2018] EWHC 1608 (CH) Walton International Ltd. & Giordano (HK) UK Ltd.Vs..Vs..Verweij Fashion BV).Walton, part of the Giordano Group, sued Verweij Fashion for violation of its registered brand Giordano in the United Kingdom.Verweij Fashion on the other hand requested, among other things, the revocation of Walton's Giodano brands in the United Kingdom and the European Union due to lack of real and effective use.

The brands can, in principle, renew indefinitely, provided that the registration rates and the owner of the brand in question are paid make real and effective use of the same.This last condition is relevant since in the absence of real use it can mean the cancellation of the registration mark.Such extreme consequence is based on various reasons among which are the risk of granting monopolies (potentially indefinite) on distinctive signs and disincentive to speculative defensive records, which would favor companies with more financial resources, such as the Giordano group.

Judge Arnold ruled forcefully in favor of Verweij Fashion and declared void Walton's brand records in the EU and the United Kingdom for Giodano due to the lack of real and effective use of those brands in the United Kingdom.

Judge Arnold made use of the evidence that the English courts have developed to interpret the legal criteria on the real and effective use of the brands.Judge Arnold listed a series of factors to apply this test.Made clear that "testimonial use" to avoid the nullity of a brand is not enough.Real and effective use implies that the owner of a brand seeks to create or maintain a market share for products under that brand.In this sense, the use of free samples or products does not qualify as "real use".Finally, quantitative aspects (sales volume) are not in themselves determining, but should be considered together with the nature of the products in question and the size and participants in the relevant market.Judge Arnold made it clear that selling potatoes is not the same as selling commercial aircraft in the context of the legal obligation to use a brand.

One of the most interesting points analyzed in the English sentence was the use of brands on the Internet.Walton alleges as a real use of its Giordano brand online sales to residents in the United Kingdom made from its global website (".com "), as well as from the Aliexpress sales platform belonging to Alibaba.

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— Chris Kemp Wed Feb 20 14:22:27 +0000 2013

After analyzing the evidence, Judge Arnold considered that online use by the Giordano group was not a real and effective use of its brands in Europe, because (i) the websites from which sales were made in Europe were global,that is, not specifically aimed at European customers, and (ii) online sales to European customers were insignificant.

In addition, the judge ruled that online sales reached by the Giordano group in Europe under its Giordano brand were not a genuine use since (i) were used for medium -rank garments, and the size of the market of these garments is very large,and (ii) the scale of sales made in Europe was insignificant in view of the business of the Giordano group worldwide.

Judge Arnold not only declared the Giordano brands of the Giordano group invalid, but also made it clear that the Giordano group was acting unfair (Passing off) when taking advantage of the good commercial name of Verweij Fashion in its Giordano brand.

The cases of brand expiration due to lack of use are normally interesting as evidenced by the fact that the dispute of probably more famous brands in our country (Nike vs..Cidesport, for all STS 28-III-2005) it will precisely focus on this issue.