Chanel is not just pursuing a number of legal battles in connection with its many trademarks in the U.S., but is fighting alleged infringers on an international basis. The Paris-based design house’s most recent win comes by way of a ruling late last month from Florence’s Intellectual Property Court, which upheld a trademark infringement and unfair competition lawsuit that Chanel filed against a locally well-known Florence-based perfumery. Interestingly, while the perfumery at issue, which has remained unnamed, is an authorized retailer of Chanel fragrances (or was before the parties’ litigation), it was simultaneously selling fake hair accessories bearing the Chanel double “C” logo.
The Karl Lagerfeld-helmed house filed suit against the defendant in an Italian court last year after being notified of the sale of the infringing accessories, alleging that the sales were particularly problematic given its relationship with the defendant perfumery. Chanel relied heavily on the argument that given the existence of authentic Chanel goods that were being offered for sale by the defendant, consumers would likely be confused into believing that it was somehow affiliated with or connected to the fake goods, which Chanel alleges were of extremely poor quality. As you may know, “likelihood of confusion” amongst consumers is the key inquiry in trademark infringement matters.
The defendant filed a counterclaim against Chanel, arguing that Chanel should be held responsible for breach of contract after Chanel “unlawfully terminated the [parties’] distribution agreement” in connection with the Chanel fragrances. Moreover, the defendant alleged that it was impossible for the allegedly infringing products to create any confusion on the market, in light of visual differences between them and authentic Chanel accessories; the difference in the retail price; and of the absence on the products themselves of any labels or tags relating to Chanel’s brand.
According to Italian attorney Michele Papa of Martini Manna Avvocati, “The Court of Florence found the claims of unfair competition and trademark infringement to be grounded, considering the signs to be almost identical, giving rise to the likelihood of both pre-sale and post-sale confusion.”
He continued on to note: “With regard to pre-sale confusion, the Court found that, upon a global appreciation of the signs and their overall impression, both the casual and loyal consumer could be confused, especially with a view to the context in which the infringing products were sold, i.e. a regular retailer which was also known as an official Chanel retailer. With respect to post-sale confusion, the Judges stated that the infringing products, once bought and worn by the purchaser, would appear to be original in the eyes of most onlookers, thus transferring the perceivable lower qualities of the infringing products onto the plaintiff’s original line.”
In light of the above, the Judges ruled in Chanel’s favor, awarding the brand damages in connection with the defendant’s sale of the infringing goods and issuing an injunction, thereby prohibiting the defendant from selling goods bearing the Chanel trademark.