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Italian court holds that it is unlawful to commercialize COAs (Certificates of Authenticity) which have been sold or purchased separately from the software they refer to and which without authorization reproduce the distinctive signs exclusively owned by Microsoft.


With decision dated 1 December 2016 the Court of Naples (Intellectual Property Division) granted Microsoft an ex parte order to be enforced against a Naples-based reseller of software products. The order required that products bearing signs infringing the “Microsoft” and “Windows” registered trademarks, and accompanying logos, should no longer be produced, imported, exported, distributed, offered for sale, commercialized, including via the Internet. The order also imposed a € 250,00 fine for each violation ascertained after the issuing of the order and a € 500,00 fine for each day of delay for failing to execute the order itself. Finally, the order obligated the party to withdraw from commerce all samples of the infringing products.

The Court, who also considered extracts of web pages named after and/or referring to the defendant, held that it had been proven that the defendant produced and/or commercialized and/or offered products, in particular COAs (Certificates of Authenticity) – which are fixed on the computers on which original Microsoft software has been installed – which could not be sold or purchased separately from the software product they refer to. The Court also found that unlawful use had been made of stickers related to Microsoft programs, in that they bore signs that infringed the Microsoft trademarks, a behavior that was judged consistent with the intention of illegally copying the software.

On 15 December 2016 the Court of Naples confirmed the aforesaid order, and also compelled the defendant to proceed with publication of the order on the Internet page of the defendant.



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.



The Court of Milan, with partial judgment published on 1 August 2016, upheld the claims of Business Competence s.r.l., finding the defendants Facebook s.r.l., Facebook Inc. and Facebook Ireland Ltd liable for copyright violation of the electronic database made of the plaintiff’s application “Faraound”, as well as for acts of unfair competition pursuant to article 2598 no. 3 of the Civil Code. The Court also issued an injunction – together with a penalty – for any further use of the application “Nearby” of Facebook, and the publication of the judgment, and adjourned the case in order to assess and quantify damages.


In the present case Business Competence s.r.l., a company which is active in the industry of online marketing services, developed in 2012 an application for mobile phone that selected and organized data of users’ Facebook profiles and allowing to view the nearest shops, together with the relevant data, offers and reviews, called “Faround”. The application was registered in the Facebook App Center, which contains applications tested and approved by Facebook, and then included in the App Store of the latter. About two months later, however, Facebook announced the launch of “Nearby”, an application similar to “Faround” and that copied the core of the same, according to the plaintiff’s interpretation, changing only the layout.

The Court of Milan – after having rejected the objections of lack of jurisdiction and lack of locus standi submitted by the defendants – has confirmed the liability of Facebook Inc., Facebook Ireland Ltd and Facebook Italia s.r.l. both for copyright infringement on database and for unfair competition acts under article 2598, no. 3, of the Civil Code.
The Judges first of all qualified “Faround” as database, implemented in the form of a computer program, having a creative character – as confirmed by the court-appointed expert during the proceedings on the merits – and stated that in order to assess such creative character only the selection or arrangement of the material should be relevant.
The Court held that Facebook’s “Nearby” is an elaboration of the program “Faround” of Business Competence, that was made possible by the analysis of the same program by the defendants and in particular by the delivery of the executable file of “Faround” for testing purposes. On the other hand, Facebook has not demonstrated that it has developed autonomously and independently its own application, nor – despite the judge’s request – has never filed in the proceedings the related source code, thus impeding the analysis and detailed comparison with the other party’s application.
The Court also confirmed the responsibility of the defendants for infringing article 2598 no. 3 of the Civil Code, as it exploited unfairly others’ investments for the creation of a work of considerable economic value, abusing the relationship of trust based on the contacts and the contractual relationships established with the developer Business Competence and violating the obligations of good faith, trust and fairness.

In this regard, the Court stated that Facebook was not allowed to analyze the “Faround” program to develop a similar application that was also addressed to the same users. That is because article 64ter of the Copyright Law allows analysis activities only to the extent that they are intended for using the program and for its typical functioning, while it prohibits such activities for commercial purposes, under penalty of nullity of the related contract clause. Therefore, the clauses in the agreement between the parties, that allowed Facebook to “analyze the applications, contents, and data for any purpose, including commercial ones”, should be considered void.



With two decisions dated 9 and 16 November, the Office held in favour of a claim of invalidity of two Community designs for movement devices of footboards and couch heads to be inserted within armchairs and couches.


Claims of invalidity were brought against designs for movement devices of footboards and couch heads to be inserted within armchairs and couches:

testiera                        pediera

The two actions for invalidity were put forward on the central basis of the non-protection of the above mentioned devices as designs for infringement, among other provisions, of arts. 4 and 8 of Reg. 6/2002. In the petitions it was argued that the devices could not benefit from the protection granted to designs because i) they were components of a complex product destined to become invisible during the normal use of the complex product in which they had been incorporated; ii) the characteristics of the appearance of the devices were determine solely by their technical function.

The decisions start from an analysis of art. 4 of Reg. 6/2002, observing that the component of a complex product is protectable if it possesses the requisites of novelty and individual character and remains visible once it is placed in its final position within the complex product. The Office, noting on the one side that the device has to be present from the beginning within the product and recalling, on the other side, that the concept of accessory requires the possibility of applying it to the finished product in a second moment, properly qualified the devices at issue as “components of a complex product”.

Once it had been established that the Community designs concerned the component of a complex product, the attention of the Division turned on the analysis of the requisite of visibility of the component during normal use. On this point, the decisions recalls the settled case law which provides that the requisites under art. 4 of the Regulation should be satisfied when the entire component may be seen, for a given period of time in such a way that its all essential characteristics may be recognized.

The Office therefore held for the declaration of invalidity considering the total invisibility of the component during normal use of the product. The other motives of invalidity were not examined for reasons of procedural economy.

The two decisions represent an important arrival point for the re-affirmation of the categories of industrial property rights and of the scopes of protection which have to be recognized to them – especially in the hypothesis of when the titles are released by the Office without prior control of the existence of the requisites of validity imposed by the Regulation.

In a system without preventive examination, it is easy to assist to episodes of manipulation of “false” industrial property rights which must be strongly contrasted for the purpose of restoring the proper market dynamics.



With the judgement published on May 12, 2016, the Court of Venice – Commercial division – ruled in favour of Ecolab Inc. and partially rejected the appeal against the decision of September 23, 2015, held by the same court in favour of the American multinational.


The appealed decision, taken at the end of an urgent proceedings promoted by Ecolab and aimed at the investigation of the infringement of its trademarks by the sign “Ecolabioworld”, had in fact inhibited the counterparty from using said sign within its business activity, the domain name as well as in the Facebook page

The board of appeal affirmed said decision, underlining that the trademark ECOLAB has acquired a high degree of renown and distinctiveness in the public of consumers. The second instance judges also reaffirmed that a high risk of confusion exists between the trademark ECOLAB and the sign “Ecolabioworld”, as in the comparison between two denominative signs the initial term (ECOLAB, in this case) significantly affects the memory of the consumer, while the remaining differences cannot be perceived as relevant. The addition of the words “io” and “world” to the challenged sign has been deemed conceptually unable to prevent a risk of confusion between the compared signs: it would be in fact inconceivable, the board of Venice affirms, that by seeing the sign “Ecolabioworld” the consumer is able to give a peculiar conceptual meaning to it, so as to distinguish it from the renowned trademark ECOLAB. Equally interesting is the part of the judgment where the Court of Venice has rejected the adverse request of acquiescence pursuant to Art. 28 of the Italian Code of Industrial Property, affirming that said principle does not apply to non-registered trademarks, as it necessarily requests the valid registration of the later sign whereof acquiescence is requested.