HOYNG ROKH MONEGIER’s Spanish team successfully represented the fashion group G-STAR RAW in European Union trade mark (EUTM) infringement litigation against the Spanish fashion retail group MANGO, for unauthorized use made in the EU of its “RAW” trademark on clothing and accessories. The EUTM Court of Appeal in Alicante, in a judgment of 6 October 2017, upheld all of G-STAR RAW’s claims and fully dismissed MANGO’s appeal against the first instance judgment, which had only partially upheld G-STAR RAW's claims.
The EUTM Court of Appeal, in a detailed decision, corrected the first instance judgment in that all of G-STAR RAW’s claims are now accepted. MANGO’s infringement is confirmed with regard to use of the sign “RAW” on T-shirts, bags and sweatshirts, and it has been ordered to pay compensation for the infringement as well as the costs incurred to investigate and prove it. Furthermore, MANGO must have the ruling published in the Sunday supplements to the two main newspapers in Spain and on its website and social media and pay the costs of both the first instance and appellate proceedings.
It is also important to note that the appellate court accepted the petition and supporting arguments raised by G-STAR on appeal, expressly declaring that the “RAW” trademark of G-STAR should be deemed as having a reputation due to the fact that it has been used on the market for more than 25 years, is present in all EU countries in a significant number of stores (more than 2,000) and has formed the object of significant advertising campaigns, all of which led the appellate court to conclude that “there is confirmation of a company which commercializes its products using a sign extended on its market, which is the European one, through advertising and physical presence certainly relevant, sufficiently to understand that, after the years, it has acquired a sufficient knowledge by the pertinent public so as to consider the trademarks, which are multiple, as notorious.”