News

COUNTERFEITING OF SIGNATURE FERRAGAMO PLAQUE WITH A BOW

24/10/2017

In a recent ruling, the Court of Milan considered that the sale of footwear, where the metal plaque with the bow was reproduced by two owners of shops in Milan, constitutes infringement of Ferragamo’s trademarks.

 

In particular, two ladies Sun Feiyan and Wu Xiumei, who are the owners of the above mentioned shops in Milan, which are active in the retail trade of clothing, footwear and accessories, sued Ferragamo in order to obtain the ascertainment and related declaration that the trade of shoes which bore the plaque with the bow did not constitute counterfeiting of Ferragamo’s trademark.

Ferragamo appeared before the judge disputing the validity of the opposing claims and counterclaiming that the plaintiffs were found and held liable for infringement of its Community trademarks, as well as for unfair competition. Ferragamo noted that each competitor who manufactures or markets footwear is free to use other different materials to affix various signature details such as bows and metal plates on its own products and shoes. Having said that, Ferragamo admitted that it has no monopoly on the metal pieces or plates as such, nevertheless third parties are not allowed to use signs that could create confusion with the Ferragamo oval plate, which may be linked to its reputation or affect its distinctive character, especially if, as in the present case, it is reproduced together with a bow.

In the first place, the Court of Milan pointed out that in the sector in which the defendant company Ferragamo operates, it is common for manufacturers to affix their own symbol on the products so as to make them immediately recognizable to consumers; these symbols have a distinctive function such as, for example,  the trademark “Vara” of Ferragamo (subject to Community trademark registration), the first use of which dates back to almost forty years ago, 1978 to be precise, when Ferragamo put a buckle-like piece on a model of the women’s shoe which later became famously successful and known as “Vara”.

The Judges also considered that neither the difference of the little details of the dexterity footwear (such as, in this case, the position of the plaque in relation to the bow or different wording imprinted on the metal plaque) nor the fact that these shoes were sold at a much lower price than that of Ferragamo was sufficient to exclude the counterfeiting of the Ferragamo symbol. Moreover, in relation to this last point, it was made clear that the very low price and poor quality of the footwear produced by the owners of the shops mentioned above brought a further devaluation and prejudice to the reputation and fame of Ferragamo’s brands.

The two plaintiffs, Sun Feiyan and Wu Xiumei were therefore held liable for infringement of registered Community trademarks No 101931 and No 551390, owned by Salvatore Ferragamo s. p. a. and for acts of unfair competition. Sun Feiyan and Wu Xiumei were ordered to pay, by way of compensation for damages, to the well-known Italian fashion company the sum of EUR 15,000.00 awarded on an equitable basis (where the order of the Judge to produce the accounting records should not be complied with by the same plaintiffs).

It should be clarified that the present case was not followed by LGV Avvocati.


EUROPEAN PARLIAMENT DISCUSSES REGULATION OF ESPORTS IN EUROPE

27/09/2017

On September 6th 2017 in the European Parliament Sport Intergroup held a hearing entitled “The status of eSports in Europe: Need for a policy response”. The event  was attended by members of the main companies active in the field as well as by representatives of the industries involved in Esports.

 

The event was one of the first opportunities to approach  an issue concerning the necessity to create regulations on Esports at a European level, focusing on the development of framework from a legal and economic angle. In addition, it also aimed to identify the political issues related to this rapidly developing industry.

Esports, or Electronic Sports, are  forms of competitive activities, both amateur  and professional, that are facilitated by videogames. The games can be played by a single-player or multiple players while the competitions can be held  both ‘live’  involving the players who are physically present on the spot and online with other players all over the world.

The willingness to open a discussion on the Esports arises from the need to understand to what extent these “virtual” sports  and their players can be compared to the traditional ones , and to what degree the application of the regulations regarding the latter would be suitable in the area of Esports. At the moment, this area is self-regulated.

LGV, which has also been having clients from the companies and associations active in the video games industry, will follow the  developments of the discussion on Esports that is a topic of growing importance both at the European and national level.


LGV AVVOCATI WINS BEFORE THE SUPREME COURT IN A CASE ON THE LIKELIHOOD OF CONFUSION BETWEEN TRADE MARKS

14/09/2017

In a recent decision the Supreme Court excluded the responsibility of a company – defended by LGV – accused of trade mark infringement and rejected the claim made by the opposing party requesting the ascertainment of the exclusive ownership of the disputed mark and assignment of the domain name registered by the defendant.

 

With this decision, the Supreme Court re-affirmed the principle according to which the evaluation of the risk of confusion must be carried out by the judge in the course of proceedings on the merits. The judge must ascertain, on one hand, the identity or similarity of the two signs and, on the other, the identity and similarity of the products. According to the Supreme Court, these evaluations cannot be considered independent from one another, in so far as they are both instruments which aid in identifying so-called “confusion among corporations”. The Court also stated that the inclusion of two products within the same class is not adequate for the purpose of proving their similarity just as, on the contrary, similarity cannot be excluded by the fact that two products are listed within different classes. It follows that the owner of the previously registered mark cannot per se forbid the use of the distinctive sign in any form – including that of the domain name – where there is no risk of confusion in relation to the products or services. In this case, the infringement of the mark by the petitioner was excluded in that the disputed mark relates to dissimilar products.

The judgment confirms the decisions given in the previous stages of the proceedings and also ruled out that the defendant had committed acts infringing the provisions on unfair competition, given that the existence of a risk of confusion cannot be presumed – not even in the case of a famous mark – on the sole basis of the existence of a risk of association. For positively proving the existence of a risk of confusion, evidence of such risk must be produced and attention given to the persons who share the same commercial needs and therefore turn to the products which can satisfy those needs.


LEASE AGREEMENTS: RIGHT OF WITHDRAWAL UNLAWFUL WHETHER THE TENANT HAS NOT EXERCISED THE TERMINATION RIGHT

06/09/2017

As far concerns the early termination of the lease agreement exercised by the tenant, should the serious reasons occur before the expiration of the term granted to the tenant for exercising the termination of the lease agreement at the relevant legal expiration date without the tenant having terminated the lease agreement, such behavior, according to the good faith principle, must be interpreted as a waiver of the tenant to terminate the lease agreement for serious reasons for the future. Therefore, these reasons are considered as not serious since, otherwise, it would have been more reasonable to terminate the lease agreement at the expiration date.

 

The question (submitted for the first time to the Court) was whether or not the tenant may invoke, as a reason justifying the termination pursuant to art. 27, Law 392/1978, a certain circumstance occurred in a period before the last tacit renewal of the lease agreement. The answer is negative.

The Court has confirmed its consolidated case law, according to which the serious reasons justifying the termination of the tenant from the lease agreement must be objective, and caused by events which are unpredictable and extraneous to the will of the tenant, and which are subsequent to the execution of the lease agreement. At the same time the Court has introduced a new principle according to which when the serious reasons – which are subsequent to the execution of the agreement – have occurred in a period before the expiration of the term to exercise the termination right at the legal expiration date of the agreement without the tenant having exercised such right, this behavior, according to the good faith principle, must be interpreted as a waiver of the tenant to terminate the lease agreement for serious reasons for the future. These reasons can be considered as not serious since, otherwise, it would have been more reasonable to terminate the lease agreement at the expiration date. The Court is of the opinion that, should the parties decide to tacitly renew the lease agreement, this renewal implies the mutual convenience of both parties in carrying-on in the lease agreement despite the occurred and subsequent “serious reasons” which, therefore, cannot be anymore invoked by the tenant in order to early terminate the lease agreement.


THE EUROPEAN BANKING AUTHORITY (“EBA”) PUBLISHES ITS RECOMENDATIONS ON THE USE OF CLOUD OUTSOURCING SERVICES BY FINANCIAL INSTITUTIONS

10/08/2017

The consultation document is part of the project for the definition of a clear and safe regulatory framework in the field of outsourcing for European credit institutions. In particular, EBA aims at adopting recommendations in execution of the CEBS (“Committee of European Banking Supervisors”) guidelines on outsourcing of December 14, 2006 (for the complete text, see https://www.eba.europa.eu/documents/10180/104404/GL02OutsourcingGuidelines.pdf.pdf).

 

Here are the main contents of the EBA Recommendations:

  • Security of data: financial institutions, before outsourcing their services, should conduct a thorough risk assessment and should ensure that the confidentiality of the information is protected;
  • Location of data and processing: financial institutions should inform regulators of the country where the service will be performed, proposing – if necessary – a revision of the legislation on data processing. Special attention should be paid when outsourcing services concern extra UE Countries;
  • Audit: financial institutions should provide systems that allow themselves – and the regulators of the countries – full access to the business premises where the outsourcing service is performed, providing the possibility to analyse and verify the systems and devices used for providing the services outsourced;
  • Chain outsourcing: in the case of subcontract of the outsourced service, also the subcontractor shall be required to fully comply with the measures and recommendations described above;
  • Contingency planning: financial institutions shall provide well tested exit and emergency plans and make sure the outsourcing service provider is obliged to make an orderly transfer of the services so as to maintain business continuity.