Pandora triumphs in trademark dispute despite growing issues for the ‘affordable luxury sector’

Although new market opportunities present many lucrative infringement opportunities, a well-deployed IP strategy can really pay off when it comes to brand protection

Founded in 1982, Pandora are well-known designers, manufacturers and marketers of distinct jewellery. Pandora’s designs include charms made from various precious metals which are sold in what’s known as the ‘affordable luxury sector’.

Pandora registered a Community trademark over its name back in 2007, securing protection across the EU for the use of the ‘Pandora’ brand in class 14 (precious metals and jewellery).

Pandora has since come up against trademark issues with a former business partner, Mr Nielsen, whom Pandora had engaged to distribute goods throughout the central European market. The business relationship soured after their collaboration ended in 2010, resulting in a number of ongoing issues arising out of Mr Nielsen’s continued use of the ‘Pandora’ trademark for his own business ventures.

The Court ultimately considered Mr Nielsen’s unlawful use of the trademark to have amounted to taking unfair advantage of Pandora’s reputation, resulting in Mr Nielsen having misled the public in respect of the Pandora brand. Notably, Mr Nielsen used the trademark in an unlawful way by continuing to associate himself with it publicly after the collaboration ended in 2010. In particular, he repeatedly stated that he is known as “Mr Pandora in Germany” and he continued to associate himself with the trademark through social media, for example by posting a photograph on his Facebook profile of a Pandora store and stating “we have built 300-400 of these”.

The Court, therefore, concluded that Mr Nielsen’s business use of the ‘Pandora’ trademark was a violation of Pandora’s rights. The Court also deemed the violation to have been comprehensive and continuous. On this basis, the Court ruled in favour of the designer and awarded compensation and damages to Pandora for the market disturbance they suffered as a result of Mr Neilsen’s unlawful use.

This case serves as a useful reminder to businesses that trade on the value of their brand. Failing to pursue infringers could not only damage your brand and reputation but could also cut into your own market share, making it doubly important for brand owners to police their brands effectively.