Does one infringe trademarks by using printing on garments? That is the question that has come up in the dispute between Jeans Centre and H&M, in which the District Court of Amsterdam recently ruled.
The Jeans Centre retail organisation is holder of the CHIEF verbal trademark, registered for garments. H&M is selling sweatshirts that bear the word CHIEF in its (online) stores. The sweatshirt in question also shows an American Indian chief and the number 17. The question is whether this detracts from the use of the mark CHIEF, which resembles the trademark. The District Court says it does not. The word CHIEF takes up a visually dominating place as the top mark on the sweatshirt (in addition to the American Indian’s head and the number 17).
The district court therefore rules that this concerns trademark infringement:
“that the mark ‘chief’ takes up a visually dominating position on the sweatshirt. After all, the mark ‘chief’ has been placed on the sweatshirt as the top mark. As the other marks are placed below it, the mark ‘chief’ is disconnected from the image of the American Indian and is also entirely disconnected from the third element on the sweatshirt, the number ‘17’. As such, the mark ‘chief’ takes up a position on the sweatshirt that can be regarded as independent.”
As the mark ‘chief’ is a word, it will be the first thing to be noticed, says the district court. As such, “the average consumer will regard the American Indian’s head underneath the mark ‘chief’ only as a reference to the preceding mark ‘chief’.”
As a result, it is the mark ‘chief’ rather than the image of the American Indian chief that takes up a prominent position on the sweatshirt, catching the attention of the average consumer.
The number 17 does not detract from this, says the district court. This figure “may escape the attention of the average consumers in the imperfect comparison of the mark and the trademark as insignificant differences”.
This applies all the more, according to the district court, as the consumer is used to a trademark often being used in combination with various other verbal, numerical and imagery elements on garments.
H&M has to stop using the mark by virtue of article 2.20 (1a) of the BCIP and provide a statement with information about production, orders, stocks, sales, prices and profits, subject to periodic penalty payments at all times. H&M must pay the full costs of the proceedings of Jeans Centre.
The conclusion of the above is that using a (text) print on a garment, even though at first sight it seems to serve to enhance or clarify other elements on that garment, can still constitute trademark infringement.
By Joost Becker