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Case study 1

Adidas sues over Ralph Lauren stripes :

ISSUE:

A German footwear and athletic-gear maker Adidas Salomon AG has sued Ralph Lauren
Corp. for trademark infringement, accusing the U.S. fashion labels Polo line of copying its
famous three-striped logo. The lawsuit was filed by Adidas America Inc., the Portland-based
U.S. subsidiary of Adidas, in the U.S. District Court for the District of Oregon. The
complaint claims that a Polo jacket with two stripes on its sleeves bears too close a
resemblance to an Adidas jacket with three stripes. The Polo jacket "is likely to deceive,
confuse and mislead actual and prospective purchasers into believing that apparel sold by
(Polo Ralph Lauren) is manufactured by, authorized by, or in some manner associated with
(Adidas), which it is not," according to the lawsuit, filed Aug13.

Adidas asked the court to order Polo Ralph Lauren to recall all its apparel with a similar logo
and deliver it -- with all accompanying advertising and promotional material -- "for
impoundment and for destruction." Adidas, the world's No. 2 athletic apparel maker
after Nike Inc., has used its three-stripe logo since 1952. In recent years, the company has
stepped up efforts to protect the trademark.
Earlier this year, Adidas sued the U.S. Polo Association, based in Kentucky, when it
produced a shoe with two stripes. Last month, Adidas sued Vision Sports Inc., which
coordinates youth basketball leagues, for producing a shoe with four stripes. Both of those
lawsuits were filed in federal court in Portland.
DECISION

But last October, the shoemaker suffered a setback in its seven-year battle to protect its
famous trademark in Europe, when the European Court of Justice rejected the companys
claim that the use of a two-stripe design by Netherlands-based Fitnessworld Trading Ltd.
infringed on Adidas' trademark.
Case study 2
Fendi vs. Burlington: trademark infringement case

ISSUE:

Fendi originally sued Burlington in 1986 for buying counterfeit Fendi products from
distributors that were not authorized, sponsored or approved by the luxury brand.
In May 1987, Burlington entered into a consent injunction with Fendi, agreeing not to sell
any merchandise bearing Fendi's trademarks without explicit authorization from Fendi.
As early as 1993, Burlington had already begun to violate the injunction, and even after
receiving cease-and-desist letters from Fendi in April 2004, it continued to sell counterfeit
goods, according to the Fendi and its affiliates filed suit in January 2006 seeking to enjoin
Burlington from violating the trademarks, and to obtain damages based on the amount of
profits the retailer received from the products.

A federal judge has awarded Italian luxury brand Fendi SRL more than $4.6 million in
contempt sanctions following a ruling that Burlington Coat Factory Warehouse Corp.
violated a 1987 injunction by continuing to sell counterfeit bags obtained by unauthorized
retailers for almost two decades. Judge Leonard Sand of the U.S. District Court for the
Southern District of New York entered an amended final judgment of $4.66 million in
contempt sanctions against Burlington on Tuesday, a little more than a week after granting
summary judgment in Fendis favour.Fendi counsel Richard L. Mattiaccio of Squire Sanders
& Dempsey LLP heralded the penalty as a victory for designers.
DECISION:

The judge awarded summary judgment to Fendi on Feb. 8, finding that Burlington knowingly
infringed Fendi trademarks by selling counterfeit bags and other leather goods in violation of
a 1987 consent judgment and injunction.

The sanctions are only part of the award Fendi will recoup from the case. In addition to the
$4.66 million which consists of a $2.42 million monetary award plus $1.5 million in
prejudgment interest and $542,000 in attorneys' fees Fendi is set to take home treble
damages.
In addition to granting summary judgment to Fendi on its trademark infringement, trademark
dilution and unfair competition claims, the judge ordered Burlington to submit compliance
reports every six months for the next five years to prevent further infringement.
CASE 3
Amar suiting Ltd vs. Amartex Syntex Pvt. Ltd

ISSUE:
The company Amar suitings Ltd made an appeal to the high court of Punjab that another
company Amartex Syntex Pvt.Ltd was using the same trademark as they were.The appellant
company stated that they were using the trademark 'a logo of a galloping horse' from
1990.The appellant company used the trade name Amartex Suitings with the logo of
galloping horse while the defendant used Amtex suiting with the logo of running horse.
The appellant argued that on packaging used by defendant they have a trademark of Amtex
Suitings with a galloping horse. This was affecting the sales of the appellant company as
people in their normal human course of activities got confused with both the trademarks.

The defendant denies the claim against it stating that from its inception it was using the name
Amtex Suitings.They allege that the trademark Amtex Suitings is phonetically different and
the color,shade and design are also different.They allege they had no intention of coping the
trademark of the appellant and passing off its own goods as that of the applicants.

COURT'S DECISION:

The court held that both the trademarks are phonetically similar. Since both the trademark are
in respect of cloth/suiting hence the goods is also the same.It is true that there is a spelling
difference between the names but the overall impression comes out to be the same.Thus the
common may get confused between the two trademarks. Therefore, if the defendant is
allowed to pass of its goods by using a deceptively similar trademark then the appellant may
suffer irreparable loss. Thus the defendant and all the people associated with it were barred
from using the trademark Amtex Suitings with a galloping horse.
Case 4
Puma loses trademark case

ISSUE :

Puma a large German multinational company that produces sportswear accused Global
Warming , a South African distributor of footwear of trademark infringement in 2009 . Puma
contended in the application that the Global Warming's trademark is confusingly similar to
it's trademark and, moreover that confuses their clients, making them believe Global
Warming's products are in fact Puma's products. However, the Supreme Court of Appeal
dismissed the application for trademark infringement brought by German manufacturer Puma
against South African importer and distributor of footwear Global Warming in 2009. Then
Puma also appealed in the High Court with the same case of infringement and the high court
also decided that there are many differences between the two trademarks. Therefore, Puma
lost this trademark infringement case. Global Warming( Pte Ltd) is a South African footwear
distributor and is being accused of infringing trademarks belonging to Puma AG Rudolf
Dassler Sport(Puma). Puma is alleging that the GW mark exhibited on their products has
infringed upon two of Puma's registered trademarks. The trial court ruled out any
infringement and Puma escalated the appeal to the Supreme Court of Appeal (SCA).
In dismissing the appeal ,the court held there were distinguishing features between the two
trademarks as Puma is the proprietor of two trademark registrations in SA for its form strip
device , a tapering device used on its footwear.It had instituted a trademark infringement
action in the Cape High Court against Global Warming ,alleging that it used a mark that was
confusingly similar to Puma's form strip device. Global Warming denied that the footwear
was similar to Puma's on the grounds that its shoes had distinctive split down the length of
the mark.

Puma claimed royalties, an interdict and delivery of shoes from which the infringing mark
could not be removed .

The high court held that the onus rested on Puma to show that the mark used by Global
Warming closely resembled its mark and it was likely to deceive or confuse the average
purchaser.

COURT'S DECISION:

But the court ruled that there significant distinguishing features between the two marks and
said the average buyer would be able to see that Global Warming's footwear was not the
same as Puma's shoes . There was no need to consider the issue of royalties. However , the
court was not pursuaded that Puma would have been entitled to anything.more than 5%
royalty on net sales which the companies had agreed upon . puma took the matter on appeal,
but the appeal court agreed with the court s ruling that there were distinguishing
characteristics between the marks .in essence , with regards to the two rulings above , the
supreme court of appeal of south Africa has this to say :The intention to compete must not
be confused with the intension to mislead.
Case study - 5
Starbucks falls prey to accusations of bullying in trademark
dispute :

ISSUE:

Damrong Maslae and his brother Damras are two independent Thai coffee vendors who have
recently become caught up. their company Starbung was sued by Starbucks for trademark
infringement.

Starbucks delivered a cease-and-desist letter to the brothers late last year, calling for Starbung
to stop using its logo and name. The US company subsequently filed a trademark
infringement complaint and sought 300,000 baht ($9,600) in damages plus an additional
7.5% annual interest and monthly instalments of 30,000 baht until the pair drop the Starbung
logo. But having obtained an injunction against the coffee vendors, Starbucks then filed a
petition with Thailands Central Intellectual Property and International Trade (IP&IT) Court,
calling for the arrest of the vendors for failing to comply with the injunction and continuing
their use of the Starbung logo.

DECISION :

Starbucks petition was rejected at a court hearing last week. The IP&IT Court urged the two
sides to settle their dispute before the next hearing and since then Starbung has agreed to
change its name to Stylebung Coffee-Tea.

For Stylebung, the battle with one of the worlds top 100 brands could prove to be a boon.
The brothers have garnered a years-worth of publicity, and it is probably safe to say that they
are the only street coffee vendor in Thailand with such a level of international brand
recognition. Starbucks on the other hand has had attracted negative headlines for its action -
appearing to some as a multinational trademark bully.

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