TRADE MARKS
Merchandising
Davidoff et Cie SA -v- Gofkid Ltd (2003)
European Court of Justice C292/00 (2003)

This case concerned an action by Davidoff who distributed luxury cosmetics, clothing, tobacco, leather and other goods under the trade mark Davidoff which is registered in Germany and other countries. The defendants owned the markDurfee – registered in Germany later than the Davidoff mark. The marks had the same script and the same distinctive styling of the letter D and ff. At first instance the claim was refused as it was held that there was no risk of confusion between the marks.
The ECJ held that despite there being no risk of confusion between the marks, Articles 4(4)(a) and 5(2) of the EEC trade mark Directive 89/104 provided specific protection for the first registered mark against a later mark which was identical with or similar to the first registered mark and which was intended to be used or was being used on goods or services similar or identical to the first registered mark.
(The Times, 22 January 2003).