BACKGROUND TO THE DISPUTE

The entity dedicated to the modeling industry, VIVA MODEL MANAGEMENT, is the owner of the International Trademark with effects in Spain nº 0905203 “VIVA MODEL MANAGEMENT” for classes 35 and 41. For its part, the company AZUVIL LINGERIE S.L., dedicated to the business of escort services, began to use the sign “VIVA MODEL”, to identify itself in the traffic of its market and, in addition to that, adopted the domain names www.vivamodel.com and www.vivamodel.es.

In relation to the above said, the company VIVA MODEL MANAGEMENT, filed a complaint against the company AZUVIL LINGERIE S.L. and Ms. Trinidad, for trademark infringement (art. 34.2.c LM), and also for acts of unfair competition.

DECISION

In this case, the claim filed was substantially upheld. It was dismissed in relation to the acts of unfair competition. The judge did understand that there was a trademark infringement on the part of the defendants.

This conclusion was reached on the undisputed basis of the similarity between the signs “VIVA MODEL MANAGEMENT” and “VIVA MODEL”, as well as with the domains www.vivamodel.com and www.vivamodel.es, due to the fact that they all share the same predominant element. In addition to that, although it is true that the judge admits the debate on whether or not modeling and escort services are services that could certainly be considered similar, this is irrelevant, since what is complained of is in relation to art. 34.2.c) Trademark Law, which focuses its attention on the obtaining of an unfair advantage of the renowned trademark. The latter statement is considered proven, firstly, by the international reputation of the trademark and, secondly, by the lack of justification shown by the defendants in the use of the sign, although it is presumed that they also knew of the success of the trademark since the object of the company is linked to the world of fashion.

Therefore, the trademark infringement is declared and AZUVIL LINGERIE SL is ordered to cease any act of commerce, including the mere offering or promotion, on the Internet, or in any other way, of services identified with the signs “VIVA MODEL”; to cancel before the competent body the domain names www.vivamodel.com and www.vivamodel.es; to withdraw from the market, at its own expense, the catalogs and other advertising elements and/or commercial materials in which the signs “VIVA MODEL” appear and to compensate the damages caused to VIVA MODEL MANAGEMENT for the infringement of its trademark; the amount of which shall be determined in the execution of this Judgment.