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.
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.
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.