WHAT PROTECTION IS PROVIDED FOR SO-CALLED ” WELL-KNOWN” TRADEMARKS: THE GUCCI CASE
Well-known trademarks enjoy an enhanced protection which goes beyond the mere risk of confusion between products. This has been affirmed by an interesting ruling of the Italian Supreme Court concerning the famous maison Gucci.
With decision no. 27217/2021, filed on October 7, 2021, the Italian Supreme Court upheld Gucci’s action requesting the invalidation for lack of novelty of the registration by a Chinese company of two similar trademarks and returned the case to the Court of Appeal. The latter, which had previously dealt with the matter, while acknowledging the similarity of the conflicting signs and the reputation of Gucci’s trademarks, had rejected the invalidity actions by limiting its analysis to the risk of confusion between the signs themselves. Based on that, the Court of Appeals of Florence had observed that the high reputation of a mark not only is irrelevant for the purposes of assessing the risk of confusion, but it represents an additional argument in support of lack of confusion instead. Accordingly, it is precisely the trademark’s reputation and its imprint in the minds of consumers that exclude the possibility that the latter may be misled, “since it cannot be held that the power of attraction of the earlier well-known trademark may be compromised by a later sign (of the infringer)” incapable of causing a risk of confusion in a public of careful and informed purchasers like those of Gucci’s products.
However, the Supreme Court noted on this point that lack of confusion is “totally irrelevant for the application of the discipline of well-known marks”. Indeed, well-known trademarks, unlike non-renowned marks, enjoy a special and enhanced protection provided for by Legislative Decree 30/2005, implementing EC Directive 89/104. Therefore, in order to exclude the novelty of the later sign pursuant to art. 12 letter. f) of the Decree and allow the owner of a well-known mark to prohibit third parties from using the sign pursuant to art. 20 letter. c) is not necessary that there is a risk of confusion in the relevant public. According to the Supreme Court, it is in fact enough that “the infringer may take unfair advantage from the distinctive character or the reputation of the earlier sign, or that the use of the sign without good reason by the infringer may damage the well-known mark”, thereby generating the so-called “dilution” with reference to distinctiveness and the so-called “corrosion” with reference to the reputation of the mark. On the other hand, the “unfair advantage”, also known as “parasitism”, refers not to the prejudice suffered by the owner of the earlier renowned mark, but rather to the unfair advantage gained by the owner of the infringing trademark. This is the case where the infringer, by placing himself “in the wake” of the well-known trademark, benefits from its reputation, its power of attraction and its prestige without de facto paying any monetary compensation. As for the public of consumers, the Court observed that it is irrelevant that those who usually purchase Gucci products may not be mistaken, as counterfeited products may be consciously chosen by a number of consumers not for their intrinsic decorative or material characteristics, but merely for their strong resemblance to the “famous” products, perhaps in order to “pass them off” as originals.
It will therefore be for the referring court, on the basis of what has been established by the Supreme Court, to determine whether the use of the later trademark lacks a just cause that allows to take unfair advantage and profit from the distinctive character or the reputation of the Gucci trademark and it is detrimental to the characteristics of such trademark. This is definitely an important decision on the issue of famous brands and is in line with other previous decisions on the matter (see, for example, the L’Oréal ruling of June 18 2009, cited by the Supreme Court in the present decision).