Does Trademark Law Have Room For A Sense Of Humor? Dolce & Gabbana Sue Dolce & Banana

from the now-if-there-was-something-that-rhymed-with-dolce dept

Wed, Apr 11th 2012 7:59pm — Mike Masnick

It appears that Italian luxury brand Dolce & Gabbana doesn't feel that trademark law has room for jokes. It has sued a small Capetown, South Africa store called "Dolce & Banana." It seems like the shop might have a reasonable parody defense, but in the end, it really is just a joke. Is anyone actually fooled into thinking this shop is somehow connected with the luxury brand? That seems doubtful. Either way, the store has changed its name from Dolce & Banana:

To just "... & Banana"

Of course, the woman who runs the store, Mijou Beller, apparently took to Twitter asking the luxury firm why it was bothering:

“Dear Stefano, please let us be. And visit us in Cape Town. I have always admired your famous sense of humor so present in your brand and in your designs. And although I appreciate that Dolce & Gabbana is a very successful commercial enterprise, I fail to understand why Dolce and Banana is a threat.”

In the end, it's that final point that is the key. How was this brand doing any damage at all to D&G?

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Filed Under: capetown, parody, south africa
Companies: dolce & gabbana

38 Comments

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Anonymous Coward, 11 Apr 2012 @ 8:23pm

" might have a reasonable parody defense"

Well, I don't think so. Even though it's not a legal standard by any stretch, the sign is enough to probably confuse idiots in a hurry, who might only look at the first half of the sign (and the &) and not really look further.

It should also be pointed out that the sign's font is VERY similar, which could add to the confusion.

I would suspect that a sign in a different format with a different look might not have attracted so much attention.
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- Anonymous Coward, 11 Apr 2012 @ 9:14pm
  
  Re:
  You sir are an idiot
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  - Anonymous Coward, 12 Apr 2012 @ 7:18am
    
    Re: Re:
    in a hurry
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- apauld, 11 Apr 2012 @ 10:58pm
  
  Re:
  So, I gather from your response; that you would have been fooled about the relationship between a high end Italian brand name, and a outback South African store. That says much more about you than it does about anything else.
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  - Anonymous Coward, 12 Apr 2012 @ 2:43am
    
    Re: Re:
    No, he didnt get that far into rational thought. It was just simply the first instinct that his fingers where able to type. Anything more, a counter point of some type, is just to much to ask from the likes of him.
    
    To say he was aware of anything, name or otherwise, is giving to much credit.
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  - Anonymous Coward, 12 Apr 2012 @ 7:25am
    
    Re: Re:
    "That says much more about you than it does about anything else."
    
    Yes, it says I have traveled the world extensively, lived in different countries and cities, and learned that what passes for a store in your neighborhood might not be the same as it looks in other places.
    
    You probably need to get out more.
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    - Torg (profile), 12 Apr 2012 @ 8:25am
      
      Re: Re: Re:
      So, you're seriously proposing that South Africans might confuse Dolce & Banana with an Italian luxury brand?
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      - Anonymous Coward, 12 Apr 2012 @ 9:48am
        
        Re: Re: Re: Re:
        No, I am saying that location isn't enough to excuse a clear attempt to play off a trademark - but that play off the trademark is enough to perhaps risk the trademark if it isn't zealously protected in that country.
        
        It is never as simple as Marcus tries to make it look.
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        apauld, 12 Apr 2012 @ 10:44am
        
        Re: Re: Re: Re: Re:
        Ha! It is never as simple as Marcus tries to make it look. You may think I need to get out more (which I actually don't), but you certainly need better reading skills.
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    - Anonymous Coward, 12 Apr 2012 @ 9:05pm
      
      Re: Re: Re:
      >Yes, it says I have traveled the world extensively, lived in different countries and cities, and learned that what passes for a store in your neighborhood might not be the same as it looks in other places.
      
      Then you, sir, should have the tact to realise that you are a living insult to me, my culture and my country. What passes for normal for you might be completely unacceptable in other places. As the embodiment of this rule I therefore request that you jump off a cliff as is rightfully deserved in our culture.
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      - Anonymous Coward, 12 Apr 2012 @ 11:36pm
        
        Re: Re: Re: Re:
        Work at it. One day you can be just like Marcus, a mindless ass kisser!
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        Anonymous Coward, 13 Apr 2012 @ 5:27am
        
        Re: Re: Re: Re: Re:
        Wait a minute, your name isn't Marcus.
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Elise, 11 Apr 2012 @ 8:43pm

Parody
How about Dulce & Banana?
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- David (profile), 12 Apr 2012 @ 7:07am
  
  Re: Parody
  I was thinking the same thing... But Spanish is not very common in South Africa.
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  - BeeAitch (profile), 12 Apr 2012 @ 11:25am
    
    Re: Re: Parody
    ...and Italian is?
    
    Honest question.
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    - Torg (profile), 12 Apr 2012 @ 3:50pm
      
      Re: Re: Re: Parody
      Spanish with a different accent.
      
      Seriously, a Mexican can get around Rome as easily as an American can get around London.
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MrWilson, 11 Apr 2012 @ 8:56pm

The best response would be to change the name to Douchey & Banana.
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- Anonymous Coward, 12 Apr 2012 @ 4:40am
  
  Re:
  I thought the same thing, but who would want to go into a store called Douchey?
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Anonymous Coward, 11 Apr 2012 @ 9:03pm

This is why you should never allow lawyers to play in the Board Room. Their first instinct is to file a lawsuit even if it is pointless and ends up hurting the company in the long run.
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Torg (profile), 11 Apr 2012 @ 9:05pm

Now they're infringing on Banana Republic's trademark. They just don't know when to stop.
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Anonymous Coward, 11 Apr 2012 @ 9:31pm

Why are companies still letting their lawyers drag their brand names through the mud in these desperate attempts to rack up billable hours?
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That Anonymous Coward (profile), 11 Apr 2012 @ 11:11pm

The damaged D&G by existing and forcing them to look like tiny minded, money grubbing, dickheads who have no sense of humor when they sued a tiny little business.
They will bellow and moan about how they were "forced" to do this or suddenly their entire brand would be up for grabs by anyone, blithely ignoring there are much easier ways to solve these sorts of disputes and you could create amazing good PR for the brand by not looking like giant asses.

But when your allegedly dodging taxes, using "gang rape" images to sell your brand, and generally being dicks to your Hong Kong customers, I guess anything is fair game.

https://en.wikipedia.org/wiki/Dolce_%26_Gabbana#Controversies
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- Anonymous Coward, 12 Apr 2012 @ 5:54am
  
  Re:
  Dolce & Gabbana make some of the ugliest crap I have ever seen, and why anyone thinks that riffing off their name would be a plus it beyond me. I could afford to buy their crap, but since it is crap, why would I? With them, Coach, Louis Vuitton and other "haute" gimcrackery makers, the world is a much uglier place than it should be.
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Drew (profile), 12 Apr 2012 @ 1:18am

You know what needs to happen... You see all these fucking companies using lawsuits to hurt the little guy. They damn well know they are going to be thrown out but the damage has already been done."Costing them time/money they can't afford" They need to make the companies that bring the worthless lawsuits against others 100% responsible for cash reimbursement for the courts cost and time and the person/s involved.

That means all lawyer cost plus time and they should be fucking harsh when it comes to time. There are plenty more things the courts could be doing. "LIKE SENDING KILLERS AND RAPIST TO PRISON"
(Also yes I realize them types of trials are going to be with another judge) ((HOWEVER There would be more resources for it if not wasted on pointless bullshit))

If they would just teach a few of these mother fuckers a lesson I guarantee the numbers would drop based on the fact they already know the only point of their lawsuits is to cost people money who simply cannot afford it.

My new view of Dolce & Gabbana I hope someone gives them a good dose of chainsaw rape. It's basically what their doing to the little guys.

Signed,
Ben Dover
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Anonymous Coward, 12 Apr 2012 @ 2:22am

they only sued because they can, knowing full well that the little shop would be forced to back down as it has insufficient money to put up a legal defense. basically, regardless of right or wrong, the wealthy bully wins yet again. pathetic!
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Anonymous Coward, 12 Apr 2012 @ 2:53am

Rename it Dunce & Banana.
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- G Thompson (profile), 12 Apr 2012 @ 4:34am
  
  Re:
  Nah..
  
  "Dolce & Gabbana R Dickheads"
  
  parody, hyperbolic and non-confusing
  
  Also the South Africa community would most likely agree with that sentiment reducing further the moronic ability for the company to take action, including on defamation (since it's hyperbole with maybe a kernelk of truth too)
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LazyDave, 12 Apr 2012 @ 3:24am

It's tempting to think this is another of those David vs. Goliath scenarios, though I wonder about a few things. Namely, if Dolce & Gabbana is arguably well-known in Cape Town, has established trademark rights there, etc.

From reading this story:

http://www.wwd.com/fashion-news/fashion-scoops/going-bananas-5836227

It seems they've been at it since six years ago. Of course, it's D&G's burden to prove consumers are indeed likely to be confused with D&B, but using one's financial muscle does seem more practical.

Alas, it's still sad to see things like this happen.
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Anonymous Coward, 12 Apr 2012 @ 3:33am

The problem is: the banana part is the Dolce.
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Anonymous Coward, 12 Apr 2012 @ 5:43am

Dulce et decorum est, pro patria banana
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RonKaminsky (profile), 12 Apr 2012 @ 6:41am

Encouraged by bad law
Trademarks which are not actively enforced have been rescinded by the courts. This leads to all kinds of silly things, like this lawsuit. It is highly unlikely, in my opinion, that D&G's trademark will somehow become genericized, since their product isn't sufficiently unique, nor does it have an overwhelming market share.
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Anonymous Coward, 12 Apr 2012 @ 9:08am

Nike doesnt like Mikes
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- Digitari, 12 Apr 2012 @ 9:39am
  
  Re:
  ^this, this is so beautiful, I think I'm gonna cry
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Ellen Huntington, 17 Sep 2012 @ 7:48am

DG
Another scandal is gonna pop up, Dolce and Gabbana opened 2weeks ago a store in Kiev, Ukraine, in. Shopping center Mandarin Plaza. It is worth mentioning that Mandarin Plaza is owned by a dangerous and FBI wanted criminal, Semion Mogilevich. Looks like the designers are looking for troubles...
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paolo, 25 Sep 2012 @ 6:25am

Mandarin Plaza, DG and Semion Mogilevich
Yes, It is true, I read this story lately which makes me feel truly sick, as sometimnes you believe that such a powerful brand should only polay fair. Nothing more misleading. Dolce and Gabbana got straight directly into avoiding paying taxes in their own country, and now they cooperate with a dangferous Criominal semion Mogilevich in Mandarin Plaza Kiev. Thats a real scandal, however, I am sure they will win all the casesa and pay many bribes anyway...
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- Pamela, 25 Sep 2012 @ 7:01am
  
  Re: Mandarin Plaza, DG and Semion Mogilevich
  I am shocked! That's can be truth! I hope Dolce and Gabbana didn't know that Mandarin Plaza be owned by criminal person like Semion Mogilevich. Why they make a bussines with such person? It destroys a good reputation!
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  - Armando, 26 Sep 2012 @ 4:02am
    
    Re: Re: Mandarin Plaza, DG and Semion Mogilevich
    OMG:) Darling,m the point is, they have no reputation at all so there is nothing to destroy. Have you heard about Hong Kong racism and tax evasion? and now by opening a store in a shopping Center in Kiev,( mandarin Plaza as I remember is quite new) owned by a criminal ( quite serious,by the way, i checked in google)they just proved that they have no reputation.
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    - ChocolateGirl, 26 Sep 2012 @ 4:13am
      
      Re: Re: Re: Mandarin Plaza, DG and Semion Mogilevich
      I tought that Dolce and Gabbana be able to open the store in Kiev without help of the Russian Mafia and the gangster as Semion Mogilevich!!!
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