‘Doncafe’ trademark dispute: a finding of dilution requires careful analysis

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By Bogdan Ivanišević

Strauss Adriatic doo, proprietor of the famous mark ‘Doncafe’, sued a defendant who had distributed coffee cups to which it affixed the mark. The Commercial Court in Belgrade found that the defendant took unfair advantage of the reputation of the mark owned by Strauss Adriatic doo, damaged the mark’s distinctive character and damaged its reputation (judgment of 15 October 2013, Strauss Adriatic doo v Yao Fa doo, case no. 41 P 5082/2013).

The court also determined that consumers of the cups would be ‘misled’, which in the context probably means that, according to the court, the defendant was responsible for creating a likelihood of confusion.

The court, therefore, found the defendant Yao Fa doo responsible on a number of grounds: parasitism (taking unfair advantage of the famous mark), blurring (damage to the distinctive character of the mark), tarnishment (damage to reputation) and confusion (consumers would think that the cups originated from the same company that produced the coffee). The court may have overzealously applied the provisions of the Serbian Trademark Act that contain various grounds for liability, without explaining why each specific ground was applicable in the case at hand…

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