Stronger protection for brands in legal face-off

Well-known brand typefaces will enjoy greater protection from lookalike rivals after a ruling last week by the European Court of Justice, says trademark law firm Bristows.

Brand owners can now invoke ‘unfair advantage’ and ‘detriment’ against imitators using similar fonts and typefaces to market the same goods. Previously, this protection had only applied where the trademarks operated in different product categories.

‘There may have been some imprecision in the wording of the 1994 Trademark Directive,’ says Bristows intellectual property partner David Wilkinson. ‘In essence, the ECJ has decided it was odd there should be less protection where potentially infringing marks are in use with similar goods.’

The case was brought before the ECJ after luxury goods-to-tobacco company Davidoff sued Gofkid in Germany for using the mark Durffee in an identical script to Davidoff’s on identical products where the brand had trademark protection.

The German courts found no risk of public confusion between Davidoff and Durffee. But the decision was referred to the ECJ to decide whether Davidoff could accuse Durffee of taking unfair advantage of its trademark and consequent brand awareness.

Representatives of the UK Government argued against the interpretation advanced by Davidoff, but the court ultimately found in favour of the luxury brand owner.

Markforce Associates attorney Amanda Reynolds adds, ‘[This] judgement is an important clarification of the law as it relates to well known marks – it will be particularly welcomed by premium brand owners in Europe.

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