Enforcing trademark rights is the main mechanism for fashion companies to protect their brand. The imitation or reproduction of a distinctive sign can cause confusion among consumers, especially when they identify similar or related products/services.
For famous or well-known marks the argument is usually the risk of trademark dilution, that is, usage in a way that can lessen their uniqueness, rather than consumer confusion.
When a possible trademark infringement is detected, the first step in the enforcement strategy is to send a cease and desist (C&D) letter (or letters) to the infringer. Litigation is also the last resort, not only for the costs but because it it's a lengthy process.
And that is what happened in the Dolce & Gabbana vs. Dolce & Banana case below.
Dolce & Gabbana, trough its holding company Gado, filed a lawsuit against "Dolce & Banana", a South African jewelry retailer from Cape Town.
"Dolce & Banana" sells jewelry pieces made from shells, woods and beads and has been active for 12 years.
Mijou Beller, the company's owner, is being of “objectionable conduct” and of “diluting” the luxury brand’s name. Gado also alleges that “the name Dolce and Banana makes a mockery of the well-known trademark Dolce & Gabbana".
According to the local firm that is handling the case, Beller had ignored the previous two warnings (the first one sent six years ago). Beller said she cannot afford to fight against Dolce & Gabbana in court and therefore she has changed her company name to simply "Banana".
The name change has cost her 10,000 South African rands, or about $1,320, 10 percent of the 100,000 rands (about $13,195) Dolce & Gabbana is demanding she pay, representing just under half of the 220,000 rands in legal fees incurred in connection with the lawsuit.
Beller has declared that paying the amount demanded by Dolce & Gabbana would put her out of business. She has even tried to directly contact Stefano through Twitter about the case:
“Dear Stefano, please let us be. And visit us in Cape Town. I have always admired your famous sense of humor so present in your brand and in your designs. And although I appreciate that Dolce & Gabbana is a very successful commercial enterprise, I fail to understand why Dolce and Banana is a threat.”(Source: WWD)