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INFRINGEMENT OF THE FAMOUS PRONGED “DIADORA” SIGN. THE COURT OF TURIN IS CALLED ON TO DEFINE THE LIABILITY OF THE INFRINGERS

08/11/2016

The Court of Turin, with decision dated August 3, 2016, held that the figurative mark representing the known bifurcated owned by Diadora S.r.l. had been infringed. The Turin Court found all the defendants liable for each having contributed – albeit in different ways – to the marketing of footwear bearing a sign mostly identical to the “Diadora” mark. The Court clarified that infringement may also include any contribution – even if only of an advertising nature – to the unlawful of a third party sign.

The petitioner Diadora S.r.l., a company which active within the footwear and clothing industry, proceeded to enforce its bifurcated mark which had already been registered at a national, international and European level.

In particular, the petitioner commenced urgent proceedings claiming that the defendant companies Melania Italia S.r.l., Fantasia Calzatura S.r.l. and Punto 4 S.r.l. had commercialized and advertised on several Internet certain footwear products, reproduced below, all of which had a “Melania” sign that was mostly identical to the mark registered by the

The Court of Turin found that the sign fixed on the shoes advertised for sale by the defendants amounted to infringement of the signs of the petitioner, given that such sign entirely reproduced all the elements of the Diadora mark (including their dimension and positioning on the product) and the fact that the defendants had added a star on the upper prong of the sign was not enough to remove its evocative power of the Diadora mark and, therefore, the consequent risk of confusion as to the origin and provenance of the goods.

The Court of Turin held that all the defendants had been responsible for the infringement and thus rejected the exception raised by the defendant concerning the lack of passive legitimacy of the company Melania Italia S.r.l. which claimed that it had never entertained commercial relations neither with the petitioner nor with Fantasia Calzature and Punto 4 S.r.l. and was also not the owner of the domains www.melania.it and www.fantasiacalzature.it (which belonged to others) where the footwear with the star had been advertised. In particular, the Court reasoned that, according to settled case law, any causal contribution – albeit only of an advertising nature – to unlawful use of a third party sign may amount to an infringement.

In this case, it was known that Melania Italia S.r.l. had presented itself in the advertisements and on the market as the entity using the sign in dispute. Moreover, on the website www.melania.it – where the footwear had been advertised and sold – the indication “Melania Italia S.r.l.” was present and on the back of the box containing the shoes, purchased from the Pittarello shop in Turin, it was declared that the shoes were produced and distributed by Melania Group S.p.a.. Finally, an inquiry had revealed the existence of invoices issed by Melania Italia S.r.l. connected to the products bearing the disputed sign. Under those circumstances, the involvement of the defendant Melania with respect to the infringement of the sign had been ascertained.

THE ADVOCATE GENERAL ADVISES ON THE SCOPE OF APPLICATION OF THE PRINCIPLES OF THE IP TRANSLATOR JUDGMENT – THE CASE “Lambretta” – C 577/14 P
29/09/2016

Is the burden of precise indication of protected products and services confined to the trade mark application or does it also concern marks that have already been registered at the time of the famous judgment of the Court of Justice? In the context of a dispute concerning forfeiture for a five year period of non-use of the Community mark “Lambretta”, rigid application of the above mentioned principles was requested and not only with respect to trade mark applications but also for marks already registered at the time of the aforesaid decision. Within case C-577/14, the Advocate General has now expressed his doubts as to the applicability of the principles in the described context.

With decision dated 24 September 2010, the Cancellation Division of the EUIPO declared partial forfeiture for a five year period of non-use of the mark “Lambretta” for products falling within, among other things, class 12 of the Niece classification. The title of this class includes, according to the Niece Classification, «Vehicles; terrestrial, aerial and nautical locomotion devices» and does not expressly include spare parts for these products. The petition against said decision was not successful (with reference to products falling within class 12): the Petition Commission considered actual use of the “Lambretta” mark for products of class 12 to be insufficiently proved and held the proffered evidence for use of the mark with respect to spare parts (for products falling within said class) to be irrelevant. This was because the spare parts, not expressly claimed with the trade mark application, would not fall within the objective scope of protection on the basis of the principles of IP Translator judgment.

The decision of the Petition Commission was appealed with a cancellation petition before the Tribunal: it was said that the Commission wrongly included the spare parts in the forfeiture declaration, where said spare parts would fall within the scope of protection in accordance with the so-called “inclusive criterion”. Based on such criterion, if a trade mark application for registration mentions – as was the case here – without distinction, the goods indicated in the title of a class, protection concerns all products of the alphabetical list of goods and services falling within such class.

The decision of the Petition Commission was overruled by the Tribunal which had excluded the applicability of the principles deriving from the IP Translator decision. Also the decision of the Tribunal was appealed by the party who had interest in the forfeiture of the mark and the proceedings are now pending before the Court of Justice (C-577/14). The Advocate General, who recently filed his conclusions, believes that it is not possible to transpose sic et simpliciter the IP Translator judgment, which concerned a trade mark application, to the case of a situation in which the mark was already registered and therefore proposes to reject the petition. Correctly, the EUIPO applied the “inclusive criterion” for imperative needs of legal certainty, a principle integrated in the legal system of the European Union.

The proposal of the Advocate General seems to have been determined by the new art. 28, para. 8, of the European Union trade mark regulation that granted owner of already registered EU trade mark the option of presenting a declaration to the EUIPO by 24 September 2016 in order to specify definitevly the scope of protection.

THE “BETTY BOOP” JUDGEMENT OBTAINED BY LGV IS SUPPORTED BY LEGAL COMMENTS

30/08/2016

On the third volume of the Italian legal periodical “Rivista di diritto industriale”, the first comment on the historic judgement held by the Court of Bari on February 22, 2016 (whereof it has already given notice on LGV’s website – https://www.lgvavvocati.it/en/news/page/3/) appeared. The comment supports the position taken by LGV in the proceedings, and essentially embraced by the Court, according to which the attempt to perpetuate the monopoly on the character of Betty Boop through the trademark protection must be rejected when the copyright on that character has expired (Court of Bari, February 22, 2016, in “Rivista di diritto industriale”, p. 293, with comment of Bixio, “Long live Betty Boop, the extra-protection of the fictional character”).

In a previous news of our website we talked about the historic decision of the Court of Bari in the “Betty Boop” case, where LGV defended the US company Avela, active in the field of posters and merchandising of fictional characters, supporting the thesis according to which – once a fictional character enters the public domain – a trademark covering the same character could not prevent the use of the character in other graphic representations, not having trademark function. The Journal of Industrial Law recently published a case note to the decision of the Court of Bari, which supports the correctness of the judgement in question, expressly affirming that “the line held by the Court of Bari it is more than appreciated where it wants to ward off the attempt to create upon the famous character of Betty Boop a revival of broader and longer-lasting rights than copyright’s ones”. The comment also points out – correctly – that an attempt of this kind is increasingly common, even in terms of prolongation of the duration of the protection and/or extension of the right’s object. Instead, it clearly arises from the comment on the decision of the Court of Bari, as well as from the previous case-law regarding the fictional character, the need to avoid any deceptive use of industrial and intellectual property tools (in this case the trademark), in a pro-competition perspective which is typical of the field of industrial and intellectual property. In fact, it should not be forgotten that such monopolies are born and live in accordance with their pro-competition effects, and more generally for the creation of values for a company as a whole: as a consequence, any use of the tools of industrial and intellectual property aiming – “extra legem” – at an undue extension of the protection shall be avoided (and considered out of the system), in order to prevent such an use from turning into an ultra-monopolistic defense in favor of people – already holders of an economically dominant position – who can perpetuate this position only by virtue of the economic investments that they are able to make, without having to actually perform any creative or innovative activity. The system of intellectual and industrial property, instead, never protects the investment “per se”, but only if it is aimed at creating a value (differently qualified by law as creative, original, distinctive, etc.). This is the strength and the function of the institutes analyzed herein, which must be defended by the operators, in order to avoid a drift of the institutes that could lead to their delegitimization and therefore – ultimately – to a boomerang effect for all the owners of rights of this kind.

REPARATION CLAUSE AND PROTECTION OF REGISTERED TRADEMARKS. THE COURT OF TURIN FOLLOWS THE CASE LAW OF THE COURT OF JUSTICE OF THE EUROPEAN UNION.

21/07/2016

With order dated May 23, 2016, the Court of Turin granted the precautionary protective measures for stopping production and sale, as well as conceding the seizure and withdrawal from commerce of wheel covers for automobiles manufactured by the company Wheeltrims S.r.l.. The wheels reproduced registered marks belonging to Volkswagen AG, Seat S.A. and Skoda Auto.

The decision adheres to the principle stated by the Court of Justice of the European Union in a judgment dated October 6, 2015, (C-500/14) and referred to a preliminary ruling submitted by the Court of Turin in proceedings involving Wheeltrims S.r.l.. According to the Court of Justice, the commercialization of spare parts, allowed within European territory pursuant to the reparation clause, does not, however, authorize the producers of the part in infringing the norms protecting registered trademarks.

The Piedmontese Court stated that the spare parts dealer may use the third party registered trademarks only and exclusively for the purpose of indicating the destination of the product or service, or with a view to indicating the compatibility of the dealer’s own spare part with a given automobile model. The use of registered signs is, however, inhibited when affixing the mark may result in confusion as to the origin of the product, preventing the consumer from distinguishing between the original product and that of the dealer.

The Court has reaffirmed the greater interest in protecting rights of industrial property as well as those predisposed for market transparency, so that the consumer may always ascertain the origin of the goods and the entity that has produced them.

LEADERS LEAGUE: NEW RANKING FOR LGV

24/05/2016
LGV is rated excellent in the sectors of Innovation & Technology and Trademark and Patent Litigation.

Leaders League – the Paris company that rates professional firms active in the specialist sectors of each country – has included LGV among law firms deemed “excellent” among those specialized in Italy in intellectual property and innovation and technology. The 2016 guide factors in the high quality service offered by the firm with regards to patent and trademark litigation as well as the work carried out by LGV in the information technology sector. The top level ranking published by this prestigious directory further strengthens the presence and influence of LGV in the international context and recognises the firm’s preeminent role in an ever more competitive global market.

For further details see: www.leadersleague.com/en/rankings/2016-ranking-of-the-top-law-firms-in-italy-it (IT ranking)

www.leadersleague.com/en/rankings/2016-ranking-italian-best-law-firms-trademark-and-patent-litigation (patent and trademark ranking)