In its 164 years of existence, Burberry has time and again defended its “haymarket check” trademark from counterfeiters across the globe. If the description did not ring any bells, let me attach a picture and I am sure it will result in an “Oh THIS pattern!” reaction from those who were not aware.
Recently, the London based company won a legal battle in the Italian Supreme Court (Criminal Division) against a number of Chinese entities that were selling products bearing a pattern very similar to the one of Burberry. The court recognized that the said trademark had a significant ‘reputation’ attached to it and thus, should enjoy broader scope of protection that went beyond traditional principles of governing trademarks.[1] The court decided that the trademark had an established reputation because it was “known by a large portion of the public and can be immediately recognized as relating to the products and services for which the mark is used.”[2]The court also added that since the trademark had a reputation, it was possible that even partial reproduction of the trademark was likely to create confusion in the minds of people with respect to the original trademark. An interesting point to be noted is that unlike a lot of jurisdictions that levy civil liabilities for infringement of trademark, the Italian law also levies criminal liability under the Italian Criminal Code for the illicit manufacture and sale of another party’s “trademark or distinguishing signs or patents, models or designs”.[3] The said judgement given by the Italian Supreme Court (Criminal Division), therefore, relates to the violation of criminal law that protects public faith, thereby leaving out any consideration of actual confusion to the public.[4] Nonetheless, it cannot be denied that this decision sets a very important precedent in favour of Burberry.
Earlier, the district level court had decided against Burberry in the said case. The reason that the court had given was that there was no infringement of the trademark because the name ‘Burberry’ did not appear on such products, thereby, not resulting into any confusion to the public. Setting an extremely dangerous precedent, the court had decided in favour of the defendants. The case was then taken to the Court of Appeal wherein it was agreed by the court that the trademark used without the name ‘Burberry’ could create confusion to the public and constitute trademark infringement. However, the court did not explicitly make a decision in favour of Burberry. It reasoned that the trademark instead of being exclusive to Burberry, rather formed a part of the famous Scottish tartan pattern. The court further said that the tan, black, white, and red tartan pattern of Burberry could not specifically be associated to the company, thereby, meaning that the pattern could not serve as an indicator of a single source. Hence, it was incapable of functioning as a trademark altogether. Following the decisions by the aforementioned courts, their overturn by the Supreme Court came as a refreshing change for Burberry.
This was not the first time that the London based company was defending its popular trademark. In 2018, Burberry had filed a case against Target Corporation alleging Trademark infringement by the latter.[5] Burberry accused Target of selling inferior quality knockoffs of the luxury brand’s iconic and famous checkmarks. Similarly, Burberry also filed suits against JC Penny, Iconix (owner of the London Fog and Joe Boxer brands) and TJX Cos. Inc. (owner of off-price department stores TJ Maxxx and Marshall’s).[6]It is interesting to note that most of these suits were settled by Burberry eventually.
The trademark in dispute has been registered in a number of jurisdictions. It has been used by Burberry for over a century. It can be seen on products ranging from garments and leather goods to mobile phone covers and home wares.[7] It is only fair that optimum protection is provided to the said trademark from infringement or passing off. The recent decision by the Italian Supreme Court, therefore, provides for a much needed and deserved respite to the 164-year-old company.
[1] TFL ‘Italian Supreme Court Confirms that Burberry’s “Check” is, in face, a Famous Trademark (16 October 2020) <https://www.thefashionlaw.com/italian-supreme-court-confirms-that-burberry-check-pattern-is-in-fact-famous/> accessed 20 October 2020
[2] ibid
[3] Italian Criminal Code, 1930 art 473, 474
[4] Cristiana Andreotta, ‘Burberry check recognised as a trade mark with reputation by the Italian Supreme Court’ (14 October 2020) < https://brandwrites.law/burberry-check-recognised-as-a-trade-mark-with-reputation-by-the-italian-supreme-court/#page=1> accessed 21 October 2020
[5] Charlene A. Azema & Jeff Van Hoosear, ‘When Plaid Goes Bad- Burberry Files Infringement Suit Against Target Over Burberry’s Iconic Plaid Design’ (10 May 2018) <https://www.knobbe.com/news/2018/05/when-plaid-goes-bad-burberry-files-infringement-suit-against-target-over-burberry%E2%80%99s> accessed 20 October 2020
[6] ibid
[7] TFL ‘Italian Supreme Court Confirms that Burberry’s “Check” is, in face, a Famous Trademark (16 October 2020) <https://www.thefashionlaw.com/italian-supreme-court-confirms-that-burberry-check-pattern-is-in-fact-famous/> accessed 20 October 2020
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