Famous brands
Well-known brands have a very wide scope of protection. They are not limited to acting against a similar trademark only on counts of risk of confusion. If the consumer, without any form of confusion, merely establishes a connection (a link) between brands, there may already be trademark infringement.
Mexx and G-maxx link
The Mexx trademark, which has been around since 1986, considers itself quite well-known and thought that it had a case against G-maxx: if there is no risk of confusion between Mexx and G-maxx, the consumer will, in any case, establish a link between these brands thanks to the double X. And that it is a trademark infringement, so Mexx thought.
Dynamic fame
However, the court ruled otherwise. According to the judge, the reputation of a trademark can decrease over the years. As G-maxx argued, ‘recognition’ is a dynamic factor. Mexx has made little or no use of its trademark for a longer period, and the bankruptcy in 2014 doesn’t help either. Moreover, Mexx’s own market research shows that the brand no longer has the status and international fame of the past.
G-maxx free
According to the judge, Mexx can therefore no longer rely on its former status as a well-known trademark. And as a result, the trademark also loses its wide scope of protection. G-maxx is free to proceed.
Even if you are the owner of an internationally known brand, it is possible that the reputation of your brand may deteriorate. As a brand owner, you naturally want to prevent this, because just like Mexx, you’d like to be able to stop the use of G-maxx for women’s fashion.
Olivia Colbeth
