The Italian fashion house Etro, known worldwide for its exclusive materials and distinctive paisley pattern, has faced an unexpected challenge in the Kazakh market. Lawyers representing the brand attempted to invalidate the registration of the trademark “ETRO,” which was registered by a local entrepreneur running a restaurant. The main argument of the Italian side was that their trademark enjoys the status of a well-known brand. In intellectual property law, this means that such a brand should benefit from protection that extends beyond the specific goods and services for which it was registered.
Despite the brand’s international reputation, the Supreme Court of Kazakhstan upheld the decisions of the lower courts and the Intellectual Property Office (Qazpatent). The judges ruled that at the time the local restaurant applied to register its trademark, the Etro fashion house did not provide sufficient evidence that its name was widely known specifically in Kazakhstan. This is a classic example of the conflict between the principle of reputation and the principle of territoriality. The court emphasized that awareness of the brand among a narrow group of fashion experts or people traveling to Milan is not the same as widespread recognition among average consumers in Astana or Almaty.
Etro’s lawyers argued that the similarity in names would lead to confusion among customers, who might think the restaurant is part of the luxury brand from Italy. However, the lack of concrete sales data and advertising expenses incurred directly in Kazakhstan before the disputed registration proved decisive. This situation demonstrates that even the most “iconic” brands must take care to formally protect their rights in each market separately, rather than relying on their global fame to automatically “take care of things” in the local patent office.
This case is an important lesson for all business owners: reputation must be backed up by solid facts and market presence. If you are planning international expansion, don’t wait for someone else to register your name in the local registry. It is worth conducting an intellectual property audit and checking whether your brand is safe in the markets you are interested in.
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