Ms. Simona Lavagnini was a member of the panel that – on the basis of the case law of the Court of Justice of the European Union and of certain recent decisions of the Italian specialized court divisions – affirmed the possibility of coexistence between two similar marks when there has been evidence of prolonged use, acceptance and absence of confusion in respect of the use of such marks


The mock trial was held on 5 December 2016 and organized by the Lawyers Association of Milan. The structure of the trial simulated that of civil proceedings on the merits and focused on the matter of trade marks. Claimant and defendant were represented, respectively, by Ms. Elisabetta Gavuzzi and Ms. Stefania Bergia, whereas the panel was composed of Attorneys Ms. Francesca Morri, Ms. Caterina Paschi and Ms. Simona Lavagnini. The case at hand concerned the issue of coexistence of trade marks, a matter of topical interest following the known European Budweiser decision, which in Italy has been followed by several interesting decisions that have applied the concept of trade mark coexistence (Court of Turin, 22 April 2016, judgment no. 2256/2016, “Roagna”; Court of Milan, 24 February 2016, judgment no. 3320/2016, “Bison – Il Bisonte”). In detail, the facts of the case were that the claimant – the company ZO.OM – alleged it was the licensee of an unregistered mark which it had been using since 1956 (Zoomia). The mark had subsequently been registered as a European trade mark for class 12 (bicycles and similar items) on 9 Janaury 1998. The claimant also alleged that the defendant, the company Zumieb, used and was the owner of a national registered trade mark (the homonym Zumieb), which had been filed for registration on 15 June 2012 and granted on 22 July 2013, for class 12, and which could be confused with the prior mark Zoomia. Moreover, the claimant argued that the defendant had created and distributed a type of bicycle that infringed an unregistered design owned by the claimant. On the basis of these circumstances, the claimant asked for a declaration of nullity of the registration of the mark Zumieb; the ascertainment of the infringement of its rights in the mark Zoomia; an injunction to prevent further infringing use; damages; and, finally, the infringement of its bicycle design, with correlated injunction and request for damages. The defendant corporation Zumieb joined the proceedings arguing that the claimant could not bring a claim for it was a mere licensee; moreover, it demanded that the claims should be rejected in so far as the marks could not be confused with one another; the Zumieb mark had coexisted for a period of five years with the Zoomia mark (a phenomenon known as “convalidation” in Italy); finally, the claimant was preempted from bringing a claim due to the prolonged coexistence of the two marks (which had begun in 2001). In the course of the evidentiary phase the issue of legitimacy of the claimant in bringing proceedings was resolved by the participation in the proceedings of the owner of the Zoomia trade mark, and production in evidence of the exclusive license agreement which provided for the right of the licensee to commence legal proceedings. Moreover, from the evidence that was given it emerged that there had indeed been episodes of confusion among the public, seeing as a consumer had taken a bicycle of the defendant to a repair shop owned by the claimant. From the produced documents and texts it emerged that the companies had simultaneously attended the same exhibitions, for several years, and that they had both provided advertisements on several media outlets. Finally, a specifically ordered technical report concluded in favour of the claimant, in particular finding that the bicycle design of the claimant was protected and had been infringed by the bicycle manufactured by the defendant. The proceedings thus reached their conclusive phase, and the panel issued its decision focusing its attention mostly on the issues of coexistence and convalidation. In this regard, the panel observed that the five year period which grounds convalidation, and which is required by art. 28 of the Italian Code of Industrial Property, had not yet ended considering that art. 28 refers to a later registered trade mark and not one merely applied for (see CJEU in the Budweiser case, 22 July 2011). In the present case, registration had only occurred in 2012, so that – for the purposes of convalidation – only four years had passed. The panel, however, after careful scrutiny of the evidence found that the two marks had coexisted on the market for 15 years; and in those 15 years there had not been any episodes of confusion among the public, with the exception of that exemplified in documentary evidence by the claimant, which in any case did not appear to be significant even from an economic standpoint, given the sales volumes documented by the parties and the average price of the product; it also appeared to be highly unlikely that the two companies did not know of the other, for they had both sold their products within the national market (and as such it was improbable that one entrepreneur did not know of his most proximate competitors, especially if they use a very similar mark) and because they had both attended, for several years, the most important exhibitions. On those grounds, the panel found that consumers had become accustomed to the simultaneous presence of both marks on the market and, therefore, regardless of the similarity between the marks, it concluded that consumers were capable of properly identifying products (which bore the same signs) originating from two different producers and so a risk of confusion could be excluded. The 15 year inertia of the owner of the prior mark had, in other words, created a situation of coexistence between the two marks which could not be ignored when finding a solution to the ongoing dispute. Considering the conclusions of the technical report in relation to the design, the panel rejected the request for a declaration of nullity of the mark Zumieb as well as the related claim of infringement; on the other hand, it found the defendant Zumieb responsible for infringement of the unregistered design and enjoined the defendant from carrying out any further infringement of the same, ordering that a sanction of Euros 1.000,00 should be imposed for each infringement ascertained after 10 days from the filing of the judgment and for each day of delay in complying to such order; finally, the panel ordered the defendant to pay damages to be quantified in the remainder of the proceedings. The decision on expenses was remanded to definitive judgment.