News

SIMONA LAVAGNINI AWARDED AS “COPYRIGHT LAWYER OF THE YEAR” AT LEGALCOMMUNITY IP & TMT AWARDS 2019

14/05/2019

Simona Lavagnini, founding partner of LGV Avvocati, once again confirmed as a top-level professional in copyright law.

 

Legal Community, which since several years is active in rating law firms and individual professionals on the Italian scene, has awarded the prize of “Copyright Lawyer of the Year” to Simona Lavagnini.
The ceremony took place on May 13, 2019 at the event that Legal Community dedicates to the IP & TMT Awards, bringing together the most prominent professionals in the field of intellectual property law.

Mrs. Lavagnini has achieved such important recognition thanks to her solid skills in copyright, which allowed her to distinguish among the Italian professionals, especially in the field of new technologies. Simona Lavagnini is particularly appreciated by her clients for her concrete and innovative action, as well as for the creativity used in facing challenges and new legal issues.

Lavagnini’s prize at the IP & TMT awards, especially in relation to a constantly developing field such as copyright in new technologies, is paradigmatic of the expertise and specialization of LGV Avvocati, which has a dedicated team of professionals all active and competent in the field of copyright and new technologies. In addition, this recognition further strengthens the presence and influence of LGV Avvocati in the field of copyright and IP intangible asset protection, giving the firm an important role in an increasingly competitive market.


AMERICAN GIANT AIR BNB INC FAILED THE OPPOSITION AGAINST THE TRADEMARK APPLICATION ‘CIAO BNB

08/05/2019

Ciaomanager S.r.l., a small company from northern Italy, filed in 2017 a EU word trademark application for the sign ‘Ciaobnb’ for products in classes 9, 35, 39, 41, 42 and 43. Airbnb Inc. opposed the application on the basis of its earlier trademarks ‘Airbnb’, but EUIPO rejected the opposition.

 

By decision of April 9, 2019, the Opposition Division of EUIPO rejected the opposition filed by Airbnb Inc in 2016 against the EU trademark application ‘Ciaobnb’, on grounds of lack of likelihood of confusion with the earlier trademark ‘Airbnb’, registered for the same classes.

In assessing the similarity of the signs, EUIPO found the two signs to be different for many reasons.

In first place, EUIPO found that the word ‘BNB’ tends to be associated by consumers with the concept of “Bed&Breakfast”, that is to say, a small receptive structure offering overnight stay and breakfast. Part of the services brought by the opposition concern the management and administration of facilities that provide temporary accommodation through online platforms or software applications; consequently, a sufficient connection between the mentioned services and the type of accommodation evoked by the notion of ‘BNB’ exists.

The opposing party observed that it does not provide the typical ‘Bed & Breakfast’ services, but an online platform service for the publication of accommodation offers by users themselves. Unlike the opponent argued, the Office held that the comparison of the signs must be assessed against the goods and the services on which the opposition is based, but not the business activities for which the earlier trademark is actually used, or for which it may have acquired distinctiveness through use. The element ‘BNB’, therefore, appears to descriptive as it alludes to the type of products and services provided. The initial parts of both signs, respectively ‘AIR’ and ‘CIAO’, were considered sufficiently distinctive with respect to the goods and services requested, as well as different from each other. In addition, the consumer’s perception of word signs focuses on the first part of the sign, thus confirming the difference between the two.

With regards to the distinctive character of the earlier signs, the Office acknowledged that Air Bnb Inc. enjoys a consolidated position in the industry, as attested by the various independent sources produced as evidence in the proceedings. Therefore, the trademark ‘AirBnb’ acquired distinctiveness before the filing date of the contested trademark application. However, the acquired distinctiveness only concerns part of the goods/services opposed and therefore, with regards to the rest of the goods/services, the assessment rests on their distinctiveness per se.

In the light of all these considerations, the opposition was rejected.


LGV AVVOCATI PUBLISHES A CONTRIBUTION IN THE “LAW AND PRACTICE” SECTION OF THE GUIDE TO PATENT LITIGATION, YEAR 2019, OF CHAMBERS AND PARTNERS

12/03/2019

In the Guide to Patent Litigation 2019 of Chambers and Partners LGV, as a firm specializing in Intellectual Property, publishes a contribution on patent litigation.

 

Chambers and partners – the English company that deals with the rating of professional firms and individual professionals, both in Europe and globally – has published on its website, in the “Law and Practice” section of the Guide to Patent Litigation, year 2019, a contribution by attorneys Luigi Goglia, Brenda Villa and Tankred Thiem, established professionals in the practice of patent litigation https://practiceguides.chambers.com/practice-guides/patent-litigation-2019/italy/1-types-of-intellectual-property-rights-grant-procedure

The contribution reviews the forms of protection granted by the Italian legal system to inventions (patents for industrial inventions, utility models and know-how) and analyzes in detail the procedure for granting patents and utility models. It also deals – among other things – with matters relating to the time line of the procedure for granting such rights, the duration of intellectual property rights, the rights and obligations that arise for the holder of the intellectual property right and the means available in the event of refusal to grant the rights analysed.

The publication by the directory represents a further confirmation of the significant experience of LGV Avvocati in the field of patent litigation, an area in which the firm already has earned important recognition in the national as well as in international context and attributes to the firm a role of relevance, in an increasingly competitive global market.


THE ATTORNEY SIMONA LAVAGNINI GETS AN IMPORTANT RECOGNITION FROM CHAMBERS AND PARTNERS

08/03/2019

Simona Lavagnini, founding partner of LGV Avvocati, has been recognized as a leading professional for copyright in the new technologies field.

 

Chambers and partners – the English company that deals with the rating of professional firms and individual professionals, both in the European context, as well as in the global one – has confirmed the inclusion of the attorneySimona Lavagnini in the first bracket of the international ranking on copyright. In particular, Simona Lavagnini is indicated as an important professional in the field of copyright related to new technologies. Among the practices that have led to this recognition to the attorney Lavagnini, are highlighted in particular: actions to fight piracy, actions on copyright infringement and claims on unfair competition.

Her experience, strategy, reliability and availability are particularly appreciated by clients, who have contributed to the achievement of this important result. Specifically, Chambers and partners reports on a client’s review, particularly satisfied with the work of the attorney Simona Lavagnini, according to whom the latter: “She is really creative and produces interesting ideas, which is something we really appreciate”.

The high positioning in this prestigious directory, especially with regards to a constantly developing field such as copyright in new technologies, is paradigmatic of the competence and foresight of LGV Avvocati. In addition, this recognition further strengthens the presence and influence of LGV Avvocati in the field of copyright and IP intangible asset protection in the international context and gives the firm an important role in an increasingly competitive global market.


EU GENERAL COURT RULES THAT “CHIARA FERRAGNI” IS NOT CONFUSINGLY SIMILAR TO “CHIARA”

19/02/2019

In 2015 Serendipity S.r.l. filed an application to register the figurative sign “Chiara Ferragni” for the classes 18 and 25. The opposition filed by a Dutch company that holds the earlier Benelux word trade mark ‘Chiara’ registered in class 25 against the above trademark was found successful, as the EUIPO found subsisting likelihood of confusion. Subsequently, the GC annulled the EUIPO decision.

 

The General Court recently issued a ruling on the trademark case bearing the name of the famous Italian influencer. The case shows how vital trademarks are in the fashion industry. In the visual comparison of signs composed by word and figurative elements, word elements are considered to be, as a general principle, more distinctive than figurative elements; in particular, consumers would more likely identify the products by saying the name of the trademark, rather than describing its figurative element. However, in complex trademarks the figurative element may be as important as the word element, taken in consideration its shape, dimension, color or position.

The GC held that the figurative element of “CHIARA FERRAGNI” is very peculiar, as it represents a stylized eye with long black lashes; the position and the dimension of the eye make the figurative element predominant in the sign. Therefore, consumers would easily memorize it, perceiving it as an elaborate and original element of the sign. In addition, the element “Ferragni” is visually more important than “Chiara”. It follows that the earlier trademark “Chiara” and the sign “Chiara Ferragni” should have been considered similar to a low extent. Turning to the assessment of the aural similarity, it can be stated that consumers usually focus on the initial part of the sign, which is the same in this case. However, as “Chiara Ferragni” is also a given name and a surname, it cannot be affirmed that the public focuses more on the name rather than on the surname, considered that it is a foreign name for Benelux’ consumers.

Furthermore, just because the marks contain the same female name, this does not mean that the marks are conceptually similar. Indeed, the trademark applied for identifies and distinguishes a certain person, that is a person belonging to the Ferragni family, while the earlier trademark only refers to a name without identifying a certain person. Coming to the assessment of likelihood of confusion, the GC found that the visual similarity of the signs plays a central role in determining the likelihood of confusion, as the products of class 18 and 25 are usually sold in self-service shops. In this type of situation, consumers’ attention is certainly captured by the blue eye sign, rather than by the word “Chiara”.

Despite the existence of a similarity between the products at issue, the differences between the signs, in particular from a visual standpoint, are sufficient to exclude the subsistence of any risk of confusion in the perception of the relevant public.