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