Dolce and Gabbana sues local Hout Bay shop

eehellfire

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#1
http://www.timeslive.co.za/sundaytimes/2012/03/25/dolce-goes-bananas-in-hout-bay

THE seaside village of Hout Bay is famous more for fishing than high fashion.

But it is the centre of a legal clash between major Italian fashion house Dolce & Gabbana and a cheeky gift and jewellery store in the southern Cape Town community.

Lawyers acting for the luxury fashion house - which sells designer garments, handbags, shoes and make-up to wealthy customers around the world - are not amused at the owner of Dolce and Banana.

The shop was founded 12 years ago by Mijou Beller and sells jewellery and gifts made of shells, beads and wood. It employs three women from Hout Bay's Imizamo Yethu township.

Dolce & Gabbana advertised its Rosa handbag, overlaid with lace, for R20280 this week; Dolce and Banana was selling leather pouches embellished with beads for R220.

Beller has now been accused of making a mockery of the global fashion brand and infringing on its trademark. In a 300-page dossier before the High Court in Cape Town, Christiana Ruella, a board member of Gado, Dolce & Gabbana's holding company, accuses Beller of "objectionable conduct" and of "diluting" the luxury brand's name.

Ruella says in an affidavit: "The name Dolce and Banana makes a mockery of the well-known trademark, Dolce & Gabbana."

In court papers, the company, founded by designers Domenico Dolce and Stefano Gabbana in the Italian fashion capital of Milan in 1985, lists its wholesale revenue for the financial year of 2009 and 2010 as R14-billion.

Beller said this week that her shop's name was tongue-in-cheek and fun. "I loved watching tourists driving by, smiling, slowing down to take pictures of our funny name," she said.

In her affidavit, Ruella says the company is also concerned about Dolce and Banana's association with "Hout Bay Fashion Week".

She said: "There is every probability that the use of Dolce and Banana in relation to jewellery and T-shirts, as well as their involvement with fashion weeks, would be likely to cause deception or confusion."

Beller said "Hout Bay Fashion Week" had been a joke. "Someone came to borrow some jewellery at my shop for a photographic shoot. Afterwards, I put the pictures on my blog and called the entry 'Hout Bay Fashion Week'. Obviously they found it online and didn't like it one bit."

Beller has had to rename her shop Banana and is busy removing all signs of "Dolce and Banana" branding.

"We don't have the money to fight them, so decided to change the name. So long, Dolce! Thanks for the good times."

She said the changes cost her in the region of R10000.

But negotiations between Beller and the Italian company are not over yet. Apart from the rebranding, Dolce & Gabbana is demanding that Beller pay R100000 of the R220000 in legal fees incurred when the case went to court.

Dolce & Gabbana's local lawyer, Herman Blignaut of Spoor and Fisher, said Beller had been warned twice before the case went to court.

"The first warning was six years ago, which she simply ignored. I take my instructions from an Italian law firm that represents Dolce & Gabbana. The R100000 forms part of the settlement negotiations, which are under way," he said.

Beller said paying the R100 000 in legal fees would ruin her business.

"I would have to sell my house. We've got a small business, we're not rich," she said.

Beller said she had tried to contact Stefano Gabbana after he started following her on Twitter.

In a letter, she wrote: "Dear Stefano, please let us be. And visit us in Cape Town. I have always admired your famous sense of humour 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."
Originally read this in the Sunday Times. I am honestly shocked that D&G is going to these lengths. This is a case of corporate bullying - take someone small to court because they obviously can't afford to fight.

We struggle enough in SA to make a living as it is - they are willing to shut down a small business that employs 3 people because D&G is a whiny baby. Their assertion that the name will "cause confusion" is ridiculous. I actually cannot believe they felt that this issue was worth their time.

I am keen to start a Twitter / Facebook campaign against D&G on this issue.
 

ghoti

Karmic Sangoma
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#2
Someone go tell them.... that you cant sue someone for trademark dilution. As per the "laugh it off case". Another case of bullies abusing copyrights, patents and trade agreements.

You can let them know what you think by sending them a tweet at: @dolcegabbana
 
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ghoti

Karmic Sangoma
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#4
Im on the D&G side on this, they have a reputation to uphold, they will win it.
Not a chance, SA court results say otherwise. Trademark "dilution" got shot out the water with the "Laugh it off" case.
 

Nick333

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#7
The directors of some companies seem to be divorced from reality. How can they not see how these sorts of law suits damage their brands far more than some small business with a jokey name ever could. It just makes them look greedy, petty and humorless.
I suppose their lawyers will never tell them for obvious reasons. They should hire random normal people as consultants and run things by them before they call their lawyers. I'd have told them to grow the fcck up for like 5% of whatever their lawyers are charging them.
 
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#8
The directors of some companies seem to be divorced from reality. How can they not see how these sorts of law suits damage their brands far more than some small business with a jokey name ever could. It just makes them look greedy, petty and humorless.
I suppose their lawyers will never tell them for obvious reasons. They should hire random normal people as consultants and run things by them before they call their lawyers. I'd have told them to grow the fcck up for like 5% of whatever their lawyers are charging them.
Unfortunately it is about the precedent that not suing sets. There is an implied acceptance if they allow this store to piggy-back on their brand name which another company could use as a reasonable defence of further infringing on the D&G brand(s). This isn't about bullying - this is a serious legal issue...
 

Nick333

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#10
You don't think that there was some piggy-backing on the D&G brand name here?
Ja, I'm sure all the Sandton fashion slave were convinced they were buying real Dolce and Gabbana shell encrusted R200 bags.
We're not talking about flooding the market with Chinese knock offs of someones product here.

What this case needs is a little common sense.
 

ghoti

Karmic Sangoma
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#11
You don't think that there was some piggy-backing on the D&G brand name here?
No more than the piggy backing on in the Laugh it Off case on SAB branding. In fact, if anything, the Laugh it Off stuff was more in your face than this.
 
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#12
Ja, I'm sure all the Sandton fashion slave were convinced they were buying real Dolce and Gabbana shell encrusted R200 bags.
We're not talking about flooding the market with Chinese knock offs of someones product here.

What this case needs is a little common sense.
It's not about the consumer's perception here - it can be reasonably argued that there was an associated opportunity cost-loss here. Opportunity cost being wholly different to the tangible validity of the goods. The opportunity cost is also not a complete thumbsuck (although in most cases it's just fuzzy accounting) - they must be able to reconcile the figures and justify them. And why should D&G be held liable for the costs? The store was given 6 years to change its name...
 
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#13
No more than the piggy backing on in the Laugh it Off case on SAB branding. In fact, if anything, the Laugh it Off stuff was more in your face than this.
They're very different cases (as far as I am concerned). In this case, the business in itself is piggy-backing on another brand. The intent is also not entirely clear here. In the LIO case it was evident that the brand was being used merely as a vehicle to pass on a humorous message, whereas in this case it is not quite as clear at all. In fact there is no clarification in any way on the part of the store...
 

Nick333

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#14
Unfortunately it is about the precedent that not suing sets. There is an implied acceptance if they allow this store to piggy-back on their brand name which another company could use as a reasonable defence of further infringing on the D&G brand(s). This isn't about bullying - this is a serious legal issue...
I think this issue was dealt with years ago with that guy with the faux brand, joke t-shirts.

I don't think you could make a reasonable case that a reasonable person would mistake D&B with D&G.

I also don't think you could prove that a memeber of the public would think less of D&G because of the existence of D&B.

I think D&G are displaying a total lack of faith in the public and legal system if they think this will set a precedent for another more blatant attempt to capitalize on their brand. In the case of a similar product line for instance.
 
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#15
D&G are displaying a total lack of faith in the public and legal system if they think this will set a precedent for another more blatant attempt to capitalize on their brand. In the case of a similar product line for instance.
I agree with all of your points, however this last point is where I sympathise with D&G to an extent. Their lack of faith in the public (in terms of trademark infringement) is valid. Companies are forever trying to get one over on each other. And in terms of the legal system, well it is that very same legal system that allows for precedents to be used as a defence. This isn't about bullying for the sake of it in my opinion. This is about a deeper protection of their rights.

Or maybe I'm completely wrong and D&G felt that they weren't getting enough value out of their legal retainer...:D
 

ghoti

Karmic Sangoma
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#16
I agree with all of your points, however this last point is where I sympathise with D&G to an extent. Their lack of faith in the public (in terms of trademark infringement) is valid. Companies are forever trying to get one over on each other. And in terms of the legal system, well it is that very same legal system that allows for precedents to be used as a defence. This isn't about bullying for the sake of it in my opinion. This is about a deeper protection of their rights.

Or maybe I'm completely wrong and D&G felt that they weren't getting enough value out of their legal retainer...:D
If the name was an exact replica of D&G and if they sold the same looking products I would agree with you, but in this case the name is a humorous tongue in cheek play on the original brand and the merchandize is nothing alike. I perosnally dont think this is fair or that they have a leg.

I dont think anyone who knows the brands would be confused and to be honest, until this article... I had never heard of either brand.
 

Nerfherder

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#17
The big guys always lose with these things... lots of publicity for the small guy and bad publicity for the big brand.

Next thing you know this shop is a little community enlistment project that hires disabled people to raise money for HIV orphans.... international condemnation here we come !

D&G should just ignore it, not worth the backlash. Also most little boutiques don't last, chances are in a year they will have closed down. Now you give them all this publicity and everyone likes to back the small guy.

Stick it to the man !
 

froot

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#18
@DJ...

How would the "a trademark only applies in countries where that trademark is well known or used"... okay, that's fairly rough, but say for instance Spar(TM).... someone in Russia could use the name Spar as long as our Spar(TM) isn't known there as a tradename from here.
 

Nerfherder

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#19
froot said:
@DJ...

How would the "a trademark only applies in countries where that trademark is well known or used"... okay, that's fairly rough, but say for instance Spar(TM).... someone in Russia could use the name Spar as long as our Spar(TM) isn't known there as a tradename from here.

Just as an example, the Polo that you see at Edgars and in those "Polo company" shops is NOT the international Polo brand made by Lacoste.
They made an SA version of the brand before Lacoste came to SA and so they actually have the right to use it here.
 

eehellfire

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#20
It's not about the consumer's perception here - it can be reasonably argued that there was an associated opportunity cost-loss here. Opportunity cost being wholly different to the tangible validity of the goods. The opportunity cost is also not a complete thumbsuck (although in most cases it's just fuzzy accounting) - they must be able to reconcile the figures and justify them. And why should D&G be held liable for the costs? The store was given 6 years to change its name...
Opportunity cost of what?
They don't play in the same markets.
The only reason that D&B didn't fight in court was because they couldn't afford to.
 
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