Pick your clothes and battles: G-maxx does not infringe MEXX

What has happened?

• The Court of Appeal of The Hague has agreed with the District Court that the use of the signs G-MAXX for clothing and related items does not infringe trade mark registrations for Mexx (stylised), registered for the same goods.

• The Court took into account the way the G-maxx mark would be pronounced by a part of the Dutch public, as well as its usual English pronunciation. The fact that there are several fashion brands that use ‘XX’ in their marks was also a relevant factor. Overall, the marks were not sufficiently similar for a finding of a likelihood of confusion despite the goods in question being identical.

• The decision also illustrates that the reputation of a trade mark can change over time. Where there is a period of non-use, this may have a large effect on the scope of protection afforded to the registration. 

• The case also shows that market research reports that are intended to prove the alleged reputation of trade marks might sometimes better be left behind in case the results are not clear and can be successfully used by the opposing party or court to conclude the trade mark in question does not possess the alleged reputation. 

The background

Mexx International B.V. (Mexx) brought proceedings against C&S Designs B.V. & G-maxx B.V. (G-maxx) for trade mark infringement, both companies active in the (online) fashion industry.

The original Mexx company was founded in 1986, gained popularity and turned into a multinational, well known fashion brand, active in over 50 countries. However, as of 2008, sales figures declined, resulting in bankruptcy in 2014. In 2017 a new Mexx entity was founded to exploit the Mexx IP rights. As of March 2018, Mexx sells fashion items in its web shop, www.mexx.com. Mexx is the owner of EU and Benelux word trade marks for ‘MEXX’ as well as the below combined marks, all registered for clothes, shoes and headgear (class 25): 

The alleged infringer, G-maxx, sells clothes and fashion accessories directly to consumers (via its web shops, www.g-maxx.nl and www.g-maxx.eu) and to other resellers, who – in turn - sell the G-maxx products in over 200 web and brick and mortar shops. G-maxx is the owner of a (younger) EU word trade mark for ‘G-MAXX’, also registered for clothes, shoes and headgear (class 25). The G-maxx sign is used in a variety of ways including: 

District Court of The Hague 

In early 2020, Mexx initiated infringement proceedings against G-maxx at the District Court of The Hague, arguing the sign infringes the above trade marks under Articles 9(2)(b) and (c) of the EU Trade Mark Regulation (EUTMR) (likelihood of confusion and unfair advantage/detriment to reputation) and similar provisions in Articles 2.20(2)(b), (c) and (d) of the Benelux Convention on Intellectual Property (BCIP).

With regard to article 9(2)(b) EUTMR and article 2.20(2)(b) BCIP, the Court first held that the relevant public is the average Dutch consumer buying women’s clothes in the mid-section price range and the attention of the public is therefore relatively high. The Court further notes that there is only some visual similarity between the trade marks and signs due the fact that both the trade marks and sign contain a four-letter word, that starts with the letter ‘M’ and ends with the letters ‘XX’. With regard to the oral similarity, the Court notes that, if the trade marks and sign are pronounced in the usual English way, the trade marks and second part of the sign (‘MEXX’ vs. [G-]‘MAXX’) sound the same. 

The Court however agreed with G-maxx that, at least a part of the Dutch public, will pronounce ‘MAXX’ element in the Dutch way (“djie-maks”) and therefore held there is only a limited amount of aural similarity between the marks and signs. Lastly, the Court states there is no conceptual similarity since it is undisputed that both MEXX and G-MAXX are fantasy names or words which have no known meaning to the public. The Court therefore concludes there is only a limited amount of similarity between the trade marks and signs and there is no risk of confusion.

With regard to article 9(2)(c) EUTRM and 2.20(2)(c) BCIP, the court held it is undisputed that MEXX used to be a well-known trade mark, but at the same time the term ‘well-known’ is subject to changes: the trade marks weren’t used for a long period and Mexx failed to demonstrate the trade marks were well-known at present. In addition, the Court concluded that the market research report submitted by Mexx confirms the contrary since it demonstrates the trade marks are not perceived in the same way as in 2008. The Court therefore concludes Mexx can also not successfully rely on article 9(2)(c) EUTMR and article 2.20(2)(c) BCIP. 

Lastly, Mexx also failed to demonstrate that the use of the domain names www.g-maxx.nl and www.g-maxx.eu results in taking unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade marks in accordance with article 2.20(2)(d) BCIP (use not in relation to goods and services for regular, not-well known trademarks). The sole argument that Mexx used to be a well-known fashion brand in the Netherlands and that these domain names are somewhat similar to the trade marks, is not enough to convince the Court. 

Based on the above, all claims of Mexx were therefore denied, and Mexx was ordered to reimburse G-maxx's legal fees.

Court of Appeal of The Hague

Mexx appealed to the Court of Appeal, basing its claims on the same legal provisions. The Court of Appeal however denied all claims, mostly relying on the same arguments as the Court. 

With regard to article 9(2)(c) EUTMR and article 2.20(c) BCIP, the Court of Appeal held that, to rely on this provision, there has to be a likelihood of association on the part of the public between the sign and the trade mark and Mexx failed to demonstrate this is the case. 

The Court of Appeal further held (also with regard to article 2.20(d) BCIP) that Mexx failed to substantiate that the use of the sign takes unfair advantage of or is detrimental to the distinctive character or the reputation of the trade marks. The argument put forward by Mexx that G-maxx did not engage in any marketing activities of its own and had fully relied on the well-known trade marks, was refuted by G-maxx with supporting evidence. 

The Court also took into account that, at the time G-maxx started to use the sign (end of 2016), Mexx was already bankrupt (2014) and G-maxx could not be aware that some clothes were still sold under the trade marks. The initiation of sales by G-maxx was therefore in good faith. Further, the Court of Appeal held that Mexx failed to demonstrate that the public (the consumer) had made changes to its behavior based on G-maxx actions. Lastly, the Court of Appeal took into account that there are several fashion brands that have ‘XX’ included in their trade marks, which, according to the Court, makes it even more unlikely that the use of the sign has had any detrimental effect to the distinctive character or reputation of the trade marks.

The appeal was also denied based on article 9(2)(b) EUTMR and article 2.20(2)(b) BCIP. The Court of Appeal, similar to the Court, concluded that the attention level of the relevant public is relatively high and there is only a limited amount of similarity between the trade marks and sign. The Court of Appeal therefore held there is no likelihood of confusion taking into account that the attention of the public is regularly mostly drawn at the first part of the trade marks and sign (which are not the same), and in addition, the public is also likely to notice the difference in the middle parts of the trade marks and sign (the letter ‘e’ and ‘a’). 

What does this mean for you?

The above case demonstrates that when comparing a trade mark as registered and a sign as used, the first part of both the trade mark and sign remain very important when assessing the existence of visual and aural similarity. Further, when assessing similarity, local circumstances (such as the Dutch pronunciation of letters or (parts of) words may also be taken into account.

Also, the fact that there is only a limited amount of similarity between the trade mark and sign, may be enough to conclude there is no infringement, despite the fact a trade mark and sign might be registered and used for exactly the same goods and/or services.

Further, it is clear that the reputation of a trade mark changes over time and a period of non-use may have a large effect on the scope of protection. Lastly this case shows that market research reports that are intended to prove the alleged reputation of trade marks, might sometimes better be left behind in case the results are not clear and can be successfully used by the opposing party or court to conclude the trade mark in question does not possess the reputation alleged.