Levi Strauss obtained a trademark in the Benelux (The Netherlands, Belgium, Luxembourg) in 1980 for a seagull trademark placed on the back of jeans. Casucci sold jeans in Benelux since 1997 bearing a similar trademark. Levi Strauss alleged that Casucci infringed its trademark.
The Court indicated that it must take into account the public’s perception at the time when the alleged infringing trademark was first used. Article 12(2)(a) of Directive 89/104 states that a trademark can be annulled if after the registration date, the trademark becomes a common name in the industry for a product or service for which it was registered.
The loss of a trademark’s distinctive character can be held against the owner where the loss is due to the trademark owner’s actions or inactivity. The trademark owner must act against infringements even if the owner is not sure it will win. If it does not act, it may lose a case when the name becomes a common name.
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