Press release of Semptember 02, 2011
In spring 2010 L’Oréal launched its new fragrance ACQUA DI GIOIA Europe-wide. M.G. Demand Holding A.G., based on its own 2002 registered trademark DI GIOIA, addressed a cease-and-desist letter to L’Oréal’s distributors in Germany, requesting to immediately stop distribution and destroy all ACQUA DI GIOIA perfume flacons on stock. The company argued that ACQUA DI GIOIA was confusingly similar with DI GIOIA since the element ACQUA (“water”) was devoid of any distinctive character and could therefore not prevent confusion between the two marks.
Only seven days after this letter, L’Oréal obtained a preliminary injunction from the Munich District Court, prohibiting the adverse party to send further warning letters to retailers. Furthermore, L’Oréal obtained an additional injunction, prohibiting M.G. Demand Holding the use of its own trademark DI GIOIA. L’Oréal based its rights on the senior trademark ACQUA DI GIO’ registered in 1996.
In the following main action the Munich District Court confirmed this position by decisions issued in December 2010 and March 2011. Moreover, M.G. Demand Holding was ordered to consent to cancellation of its German trademark DI GIOIA before the German Patent and Trademark Office.
These decisions have now also been confirmed by the Munich Appeal Court who rejected M.G. Demand Holding’s appeal on July 21, 2011 (29 U 1031/11 and 29 U 1420/11). The Munich Appeal Court upheld the first instance decisions and findings, according to which M.G. Demand Holding’s DI GIOIA trademark of 2002 was confusingly similar to L’Oréal’s earlier ACQUA DI GIO’ mark.
Moreover, the Munich Appeal Court declined to grant leave to appeal to the Federal Supreme Court. However, the Appeal Court’s decisions have not become final yet, since M.G. Demand Holding still has the possibility to file appeal against denial of leave to appeal before the Supreme Court.
Representatives L’Oréal SA:
BARDEHLE PAGENBERG (Munich):
Dr. Stefan Abel (Attorney-at-Law, Partner),
Pascal Böhner (Attorney-at-Law)
Representatives M.G. Demand Holding AG:
Lindner Blaumeier (Nürnberg): Daniel Terheggen, LL.M. (Attorney-at-Law)<
Munich Appeal Court (29. Civil Senate):Rainer Zwirlein (Presiding Judge)
Background: BARDEHLE PAGENBERG advises and represents L’Oréal since more than 30 years in the field of intellectual property.