Trademark Sensitive: D&G Vs D&G Autocare

I must admit that, when a few days ago I heard this piece of news, I thought it was a joke of some sort, and was somehow also surprised that no fashion publication wrote about this story (even though they always seem to have time and space for rather useless news involving celebrities and such likes…).  

So, what’s the story? Well, last year a Dunfermline-based garage called D&G Autocare was apparently threatened by Italian fashion brand Dolce & Gabbana over the use of the “D&G” name. The dispute found its solution only a few days ago.

But let’s start from the beginning, David Hunter and George Simpson, owners of the D&G Autocare garage with nine branches around Fife, Scotland, tried to get their name registered as a trademark last year. The main aim for the two mechanics was preventing others from cashing in on the success of their business.

David (D) and George (G) didn’t really expect to see any problems arising from their application to the UK Intellectual Property Office. Instead, in December 2011, Italian fashion brand Dolce & Gabbana lodged a “notice of threatened opposition” to their trademark.

The trademark agents of the Italian fashion house claimed indeed that the garage name conflicted with their own trademark, leading to confusion among consumers and asked them to withdraw their application.      

Yet, rather than getting scared by the harsh tones of the letter they received from the trademark agents, David and George decided to get on with the case and fight them off, enlisting the help of a solicitor.  

Essentially, the legal battle ensued since, while there are several trademark classes, Dolce & Gabbana registered the D&G name across all the different trademark classes, including class 12 which covers vehicles and vehicle parts, even though there are no vehicles/vehicle parts registered in their own name. Asking for proof of Dolce & Gabbana's presence in the car industry was indeed the key for the mechanics' solicitor to sort out the matter.

The Italian brand also offered not to oppose to the trademark application as long as the word Autocare appears with its D&G logo and the two mechanics do not apply for a registration outside Great Britain. Yet the offer was received by fax at the end of February, a day before the objection period ended and, since Dolce & Gabbana failed to make their formal objection in time, the two entrepreneurs can now use the chosen name.

This is not the first time a famous brand threatens a smaller one (Scotland seems to be prone to this sort of incidents like the one involving McDonald’s forcing a Scottish cafe owner to drop McMunchies as the trading name for her business establishment...).

Yet in this case the story sounds quite bizarre as it assumes that consumers of a fashion giant such as D(olce) & G(abbana) are probably so naïve and, well, thick, that they can’t even see the difference between a fashion item, a fragrance or accessories marked D&G and an a car garage in Scotland.

Apart from supposing that their consumers are not able to distinguish between a pair of overpriced denim trousers and an MoT, the other embarrassing point for a company as big as D&G is that of threatening with closure (in time of crisis) a relatively small yet thriving business or threatening legal action against someone smaller than them hoping they would have backed off and given up the fight.

I guess that the lawyer of the two mechanics may have probably fought off the Italian brand just by pointing out the differences between the font used by the fashion house and the font used by his clients, which leads us to wonder, what about the millions of fake made in China "D&G" T-shirts you find all over the world, many of them spelling out not only the letters "D&G", but also messages such as “Dolce & Capanna”, in exactly the same font that characterises the fashion house logo?

Wouldn't it be more sensible to try and track down who prints them, probably exploiting also the workers who make them (yes, that would be extremely expensive and complicated, but at least it would be a sensible fight...)? 

In a way, this story is rather funny: though very sensitive about their trademark,  Dolce & Gabbana often used in the T-shirts for their own collections logos, names and images linked with other brands, including Fiorucci (D&G S/S 2010 menswear collection - View this photo - ok, in this case they may have been able to use it since they are friends with Elio Fiorucci and they probably came up with an agreement with him), Coca-Cola, Fanta, Sprite and Mickey Mouse (D&G A/W 2011-12 menswear collection).

You wonder if they paid to use them or to use images of Marilyn Monroe in Dolce & Gabbana's A/W 2009-10 Schiaparelli derived womenswear collection. And if they did not pay in this case, taking advantage of Monroe's personality rights expiring, did they pay to use images of Maria Callas and of opera programmes from La Fenice in the D&G's A/W 2009-10 womenswear collection? And what about pilfering Madonna's "Who's That Girl?" look in their A/W 2011-12 collection? Did they have to pay her for that or was that a "tribute"/"homage" and should we consider a tribute (or mere pilfering) also their A/W 2011-12 starry garments, a mix of Walter Albini and Krizia's designs?

In conclusion, while the story of two Scots mechanics fighting off Dolce & Gabbana in a legal battle does not sound that glamorous to end up in the news section of many important fashion publications, it has maybe set an interesting precedent that should make us think about the use of specific trademarks and the relationships between big brands and their consumers.

Maybe D&G will have to be more careful from now on: if there will ever be any mechanics inspired workwear on their runways, David & George will know who to sue and for what.

Cartoon by Frank Boyle, Edinburgh Evening News (you can keep updated with Frank Boyle's daily cartoons by checking out his Twitter page). 

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