Dolce & Gabbana lost a trademark dispute against Ms. Dolce in Japan

Dolce & Gabbana lost a trademark dispute against Ms. Dolce in Japan

Time Stamp: May 3, 2023 1:30 AM
Source Node: 2626205

According to trademark law in most countries around the world, if one trademark has a reputation, it is famous amongst consumers, this will give the sign broader protection that can help in disputes against similar marks.

Easier said than done. One example from Japan shows us that in some situations this can be a challenge. A Japanese trademark was filed for “Ms. dolce” in class 25 – footwear.

Against this mark, an opposition was filed by the well-known Italian fashion house Dolce & Gabbana based on an earlier famous mark Dolce & Gabbana in class 25. The company stated that the first part of the mark DOLCE is related to one of the company’s founders Domenico Dolce, who as a fashion designer is well-known and recognizable. From that perspective, the company considered both signs confusingly similar.

The Japan Patent Office, however, disagreed. While Dolce & Gabbana was accepted as a famous mark in Japan, the Office doubted that this is true for the Dolce part alone. What’s more, the Office questioned the assumption that this word is recognized by consumers as an abbreviation of the designer.

Apart from this, the Office considered that both marks were not similar from visual, phonetic, and conceptual points of view. The element MS in the later mark created the necessary distinction giving the meaning related to a name of a woman. In contrast, the Dolce part in Dolce & Gabbana means sweet in Italian.

Source: Masaki MIKAMI, Mark IP Law Firm.

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