All posts by luminous

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.


A “BOW” OF TENDENCY. THE COURT OF MILAN IS CALLED ON TO DECIDE PROTECTION.

15/07/2016

The Court of Milan, with order dated 22 April 2016, granted the precautionary protective measures requested by the Italian branch of the Ports Group, a company that operates worldwide in the field of clothing and fashion accessories. The measures were directed against the Spanish company Fashion Retail S.A. as well as the Italian corporation Stradivarius Italia S.r.l. for marketing in their stores and on the website stradivarius.com a particular shoe characterized by a “bow/knot on the upper shoe” identical to the one created and marketed by Ports Italy.


 

SCARPA 2           SCARPA1

The applicant had based this precautionary action on certain acts of unfair competition allegedly carried out by the counterparties – that is, slavish imitation and misappropriation of attributes – requesting the opposing party to be inhibited from the continuation of the illegal conducts. Specifically, Ports Italy claimed that its shoes were characterized by the particular shape of a “bow/knot on the upper shoe”, so peculiar to allow the average consumer to connect such a shape (exclusively) to the applicant’s production. Moreover, given the reputation acquired on the market by the shoes with “bow/knot on the upper” after only 4 months from their entry into the market, the defendants would have slavishly imitated the characterizing form just in order to exploit the reputation of the applicant appropriating the advantages related to its production.

The Court held that the peculiar form of the shoes with a “bow/knot on the upper” was indeed a characterizing element of the applicant’s production, considering it to have that unique quality established by Article 2598, no. 1, of the Civil Code. Moreover, given the substantial identity between the products of the two companies, the confusing effect that the rule in question aims to avoid would have certainly taken place. However, according to the Court, the misappropriation of attributes under Article 2598, no. 2, of the Civil Code did not occur, since the reproduction of the most peculiar elements of the other party’s products would lead the consumer into error as to the origin of the goods, and hence would not be intended to take possession of the strengths of others, as required by the rule at issue.


SIMONA LAVAGNINI AMONG THE AUTHORS OF “THE DIGITAL SINGLE MARKET COPYRIGHT. INTERNET AND COPYRIGHT LAW IN THE EUROPEAN PERSPECTIVE”

07/07/2016

The last monographic volume of the series “Law and Policy of New Media” has been published. The volume, supervised by Mr. Mario Franzosi, Mr. Oreste Pollicino and Mr. Gianluca Campus, collates the documents of the Seminar organized in November 2015 by the Permanent Judicial Organization in collaboration with AIPPI. The work studies in depth the issues concerning circulation of digital contents within European territories, in light of the most recent technical and legislative innovations.


Ms. Simona Lavagnini has contributed by redacting the chapter titled “The Directive 2014/26/EU on collecting societies and the user’s perspective”, critically analyzing the points concerning the monopoly of which collecting societies de facto benefit from in individual European states. Specific attention is given to the user’s perspective, who is forced to negotiate with a single entity.

Ms. Simona Lavagnini has considered various possible solutions at a European level, such as to guarantee the right balance between the positions of the individuals involved. Ms. Lavagnini’s work examines the tendency to extend the application of competition rules to collecting societies, as well as the option of applying stringent norms with a view to imposing greater transparency for the protection of users and of the public interest.


 

MS. SIMONA LAVAGNINI IS AMONG THE AUTHORS OF THE VI EDITION OF THE “COMMENT ON THE LAW OF INTELLECTUAL PROPERTY AND COMPETITION” EDITED BY WOLTER KLUWER-CEDAM

22/06/2016

The sixth Edition of the “Comment on the law of Intellectual Property and Competition”, which for years has represented the go-to manual for practitioners, is currently being published.


 

As in previous editions, the name partner Ms. Simona Lavagnini has contributed to the Comment by providing an analysis of certain copyright rules, particularly art. 16-bis concerning communication to the public via satellite and cable re-transmission, arts. 100, 101 and 102 on protection of ownership, indexes, exterior appearance of a work, articles and news, as well as arts. 102-quater and 102-quinquies regarding technological protection measures and information on the rights regime.

Additionally, Ms. Lavagnini has provided significant contribution to the comment on the law regulating databases, a subject in which she is extensively experienced, and in this connection has also covered the introduction to and analysis of arts. 64-quinquies and 64-sexies concerning protection of databases that may be qualified as creative works, as well as arts. 102-bis and 102-ter which provide for the rights of the creator of a database protected by the sui generis right.


SIMONA LAVAGNINI IN BOLOGNA FOR THE AIPPI SEMINAR ON THE UNIFIED PATENT COURT

28/06/2016

The name partner Ms. Simona Lavagnini, as President of the Formation Group of AIPPI Italia, will participate at the seminar “Analysis of the procedures of the Unified Patent Court” organized by the AIPPI Italian Group. The event will be held on June 29, 2016, in Bologna, within the evocative setting of Fornace Galotti “Battiferro”, where the Museum of Industrial Heritage is located.


 

The seminar will focus on an analysis of the various legislative innovations concerning the rise of a unified patent system, and will represent an occasion to specifically deal with issues such as territorial competence, first degree trials and the procedure related to the non-infringement declaration before the Unified Patent Court.

The introduction of a new “Unified Patent” and of the Unified Court is particularly topical at the moment and presents complexities and elements of uncertainty which have now come to the forefront, particularly in light of the recent British referendum, seeing as Great Britain, one of the States that most contributed to the birth of the new system and that should have hosted the division competent to deal with cases connected to chemistry, pharmaceuticals and biotechnologies, has decided to leave the European Union. What will happen to the Unified Court?