Gina Shoes Ltd v Medici Ltd

Date

30 January 2001

Legislation

Trade Marks Act 1994

Keywords

deliberate and reckless; trademark infringement; passing off; relief; injunctive relief

Counsel

Amanda Michaels, Piers Ackland

Solicitors:

DJ Freeman; Bristows

Judge:

Laddie J.

Court:

High Court (Chancery Division)

Reported:

(2001) 24(5) IPD 24029

Summary:

Gina Shoes Ltd ('GSL') brought actions against Medici ltd ('Medici) for passing off and/or infringement of its registered trademark 'GINA', in respect of footwear items being articles of clothing. GSL was a manufacturer of luxury designer ladies' shoes. Medici carried on business manufacturing, importing, and selling clothing. Medici used the mark 'Gina' spelt in exactly the same way as GSL's mark, on a range of clothing sold almost exclusively to specialist bridal shops and shops catering for occasion wear. At trial, Medici conceded the issues of trademark infringement and passing off. The only question was relief.

Decision:

It was held that injunctive relief was appropriate in this case. This had not been a case of innocent infringement, but rather Medici had been fully aware of GSL and its reputation. Medici's shoes had not been manufactured with a 'Gina' label, in fact Medici's supplier had refused to mark the shoes as such. Medici had been warned but still continued to mark the insock of the shoes with adhesive 'Gina' labels. Medici's managing director was an unsatisfactory witness and this was a case of deliberate and reckless marking of goods with a registered trademark.

Regarding the terms of the injunction, any advertisement that showed the garments and shoes as one co-ordinated collection, and would be perceived as such by ordinary members of the public, would have to contain a disclaimer expressly stating that the mark 'Gina' was not being used in relation to shoes. Otherwise, Medici ran the risk of infringing the trademark. GSL was also entitled to elect as to an inquiry as to damages or an account of profit.