Versace 83 LTD. vs. Gianni Versace S.P.A. – the saga continues

Back in November 2000, the Italian fashion house Gianni Versace S.P.A. sued the Israeli menswear chain Versace 83 LTD. for trademark infringement, passing off, unjust enrichment and willful misleading of the consumer under the law to protect the consumer 1981 (2960/00 Tel Aviv-Jaffa District Court). The Italian company was awarded a temporary injunction forcing the Israeli chain to display a prominent sign to the effect that they were not connected to the Italian fashion house in any shape or form.  This was followed by other temporary measures – (See B.R.A 3579/01 and 4852/05).

The main ruling was held up whilst the Commissioner of Patents and Trademarks ruled on an Annulment Appeal by the Italian company to cancel Versace 83 LTD.’s trademarks. The Adjudicator applied the provisions of Section 39(a)(1) of the Israeli Trade Marks Ordinance (New Version) – 1972 as amended in 1999, whereby “application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time” ruling that the amendment is applicable with regard to registrations obtained more than five years before the amendment was introduced.

Despite Versace being a well-known brand, their case against Versace 83 LTD. was complicated by the fact that when the Israeli chain filed their trademark applications, the Italian company opposed the registration but eventually, in 1989, decided to abandon the opposition proceedings, since at that time, the Italian company wasn’t active in Israel. This created a situation where arguably the Italian firm had given up their rights to the name and come to terms with the Israeli usage. The adjudicator of IP rejected the statute of limitation and res judicata arguments in view of the withdrawal of the oppositions and also noted that there were grounds of fraud. The trademark applications were canceled in June 2008 and the Israeli company appealed to the courts, so the marks are considered undergoing a second examination.

Judge Binyamini of the Tel Aviv District court then ruled that the Israeli company had a year to stop using the Versace mark, thereby granting a grace period to sell off goods carrying the label. The Israeli company has now tried to obtain an injunction, requesting suspension of the requirement to change the name of the shops, until the appeal is heard, claiming that the chances of the appeal being successful are high and that the costs involved in possibly unneccessary implementation are exorbitant. 

Judge Hayot, has now rejected the request for suspension, pointing out that regardless of the likelihood or otherwise of success, in Israeli Law, appeals are not supposed to prevent implementation of rulings, but to reverse or cancel the implementation if successful. Furthermore, not unreasonably, she noted that the appellants had anyway received 12 months to get their act together, and that the ruling hadn’t exactly come out the blue one fine day. 

In the meantime, we note that the Israeli firm’s website indicates business as usual, see http://www.versace.co.il/ The line in Hebrew across the bottom is a disclaimer of any connection to the confusingly named Italian fashion house. We will not be surprised if the Italian’s don’t claim contempt of court.



Categories: Israel Trademark, trademarks

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