ONE FAMOUS PERFUMED TREE. THE COURT OF MILAN IS CALLED TO DECIDE ON THE PROTECTION OF REGISTERED TRADEMARKS AND COMPETITION.
The Court of Milan, with judgment published on May 11, 2016, found in favour of the action for invalidity of the trademark “Forest Fresh” as well as that of unfair competition advanced by Julius Samann Ltd and Tavola S.p.A., two companies each of which owns intellectual property rights and is exclusive licensee in Italy of the marks “JSL” which are represented by the particular stylized form of the conifer tree “Arbre Magique”. The actions were taken against the Polish company Siscar Spolka z o.o. Spolka Komandytowa which marketed products bearing the mark “Forest Fresh” thus infringing the above mentioned “JSL” marks.
The claimants sought to protect national, European and international marks constituted by the stylized form of the conifer tree, subsequently used for tree-shaped deodorants. In particular, the claimants argued that the international mark “Forest Fresh” owned by the Polish company Siscar Spólka z o.o. Spólka Komandytowa – a sign consisting of a stylized tree, at the centre of which the denominative element “Forest Fresh” appears so as to distinguish a line of products that are identical to those on which the claimants use their mark (car deodorants) – would be invalid and indeed constitute infringement of the mark owned by the claimants. It would also amount to conduct of unfair competition due to slavish imitation (of the retail packaging and of the colours used in association with identical fragrances) as well as misappropriation.
The Court of Milan held that the marks in question would cause confusion, in light of the highly distinctive character of the JSL marks and of the intrinsic characteristics of the signs (considering that the shape of the stylized tree far outweighs the denominative component of the mark and is also entirely fanciful, as it does not describe in any way the fragrance of deodorants presently under scrutiny) as well as of the reputation enjoyed among the consuming public.
The Judges in Milan thus found an infringement of the JSL marks on part of the “Forest Fresh” mark, which they held invalid. The Court also decided that the conduct of the defendant company amounted to unfair competition due to slavish imitation, as resulting from the risk of confusion between the signs, and misappropriation, seeing as the defendant presented products in the same way and made use of identical distribution channels (exhibiting them in motorway recreational shops, gas stations, shops selling housing items and supermarkets) via packaging that was also completely identical, for the sole purpose of “riding on the coattails” of the competitor. Finally, the Court also held that art. 2598, n.3, of the Civil Code, was applicable to the case at hand.