Division 2 of the Federal Court of Appeals in Civil and Commercial Matters upheld the first instance's decision that ordered a retailer to stop using the trademark "GOLA" and to pay damages.
D. Jacobson & Sons Limited, owner of the trademark "GOLA," had filed a request for a preliminary injunction against a retailer who was selling counterfeit "GOLA" shoes. Based on Section 50 of the GATT TRIPs Agreement, the Court ordered the defendant to stop using the trademark in question until a decision on the merits of the case was rendered. Moreover, the court officer attached and seized "GOLA" counterfeit shoes. The retailer answered the complaint and argued that the allegedly infringing shoes did not bear the trademark "GOLA" but "GOLD."
The court held that the defendant had attempted to trade on a legitimate right –through a blatant imitation– to obtain a profit, to mislead consumers with subtle and weak changes in the mark, changing the letter "a" in "GOLA" for the letter "d" to form "GOLD." Moreover, the court noted defendant's fraudulent behavior and ruled that he had acted maliciously and with the clear intention to infringe the trademark rights of D. Jacobsons & Sons Limited.
The decision was rendered on October 12, 2011, in re "D. Jacobson & Sons Limited v. Leal, Diego Guillermo".
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