Dolce & Gabbana loses brand battle
Recently, the Italian luxury clothing brand, Dolce & Gabbana, has lost an opposition case that they had initiated against a Japanese word mark 'Ms. Dolce'. That trademark was applied by a Japanese company BEANS CO. Ltd. for shoes in class 25. To that, Dolce & Gabbana decided to initiate opposition proceedings because of likelihood of confusion but also because the reputation of their own trademark would be affected. As a basis, they used an earlier trade mark registration for the word mark 'Dolce & Gabbana' also with protection in class 25.
No likelihood of confusion
Dolce & Gabbana's first argument was not accepted by the Japanese Trademark Office. In fact, according to them, there are plenty of differences between the two trademarks because there is no likelihood of confusion for consumers. Overall, there are indeed significant visual and phonetic differences between the two brand names, that as a result of the addition of the word 'Ms.' and the different position of the word 'Dolce'. There are also conceptual differences as the addition of 'Ms.' makes it clear that 'dolce' in this case refers to the name of a woman.
That is in contrast to 'Dolce & Gabbana', where 'Dolce' refers to one of the two male founders, Domenico Dolce, and also to the Italian word meaning 'sweet'. On this basis, the Japanese Trademark Office decided that there was no likelihood of confusion.
'Dolce', not so sweet in Japan
Unfortunately for Dolce & Gabbana, their second argument was also not accepted. First of all, there is a burden of proof to show that your brand has a reputation. In this case, ‘Dolce & Gabbana’ was able to proof this matter. However, for the component ‘Dolce’, it does not result in having a reputation…
The Japanese Trademark Office decided that no reputation could be proved for the element 'Dolce' on its own as consumers will not perceive the element 'Dolce' as an abbreviation of the full brand name. Therefore, there can also be no reputational damage to the earlier trademark.
From Andres to Xandres
A similar example from our portfolio is Xandres, a Belgian fashion brand. Andres was ready to enter new markets until they faced a legal obstacle. A French fashion brand, Groupe André, was standing in the way of their European expansion.
By making a legally decisive name change, Andres was able to bypass the legal obstacles. Remarkable recommended a name change: Xandres. In that way, the Brand Equity was not lost and Andres could expand into new markets as Xandres without further problems. And with that, they conquered the hearts of fashionable shoppers from all over Europe.
In short, the legal-creative approach was crucial for the brand's European expansion.
When you internationalise your brand, it is always important to investigate the availability of your brand name for the new markets. This should always include consideration of local legislation as well. This way you can avoid similar conflicts, feel free to contact us for more information.