Date: 1 July 2019
In Nomination Di Antonio E Paolo Gensini SNC v Brealey (t/a JSC Jewellery), HH Judge Hacon, sitting in the IPEC, has held that Nomination, an Italian jewellery company that makes modular charm bracelets, could object to sales of parts taken from its “composable bracelet” (namely, “base links” made of stainless steel which bore the NOMINATION device mark) by an online retailer of body and costume jewellery, JSC.
The court found that JSC’s repackaging of Nomination’s product was liable to damage the reputation of the NOMINATION trade marks within the meaning of the Trade Marks Act 1994 (TMA) s.12(2) and/or the Trade Mark Directive art.7(2),2 and such sales therefore infringed the NOMINATION trade marks. In the court’s view, JSC had also used the NOMINATION sign in relation to JSC’s own bracelet links which infringed the NOMINATION trade marks pursuant to TMA s.10(1), and JSC’s sale of the repackaged goods amounted to passing off.
Our full article has been published in the Entertainment Law Review, 2019, 30 (6); pages 181 to 184.
If you you have questions regarding passing off claims, please contact our Trade Marks team.