Published article on WTR (n.35 February-March 2012)
The special protection of reputed trademarks (also refered to as well-known marks, but not
by reference to Article 6bis of the Paris Convention) has a long tradition in the Italian legal system – initially through case law, which was subsequently incorporated into legislation. The scope of protection of trademarks with a reputation was introduced into Italian law in 1992 on the basis of the EU First Trademark Directive (89/104/EEC).
In accordance with Article 20(1)(c) of the Industrial Property Code, the owner of a reputed trademark may prohibit the use of a later identical or similar mark for dissimilar goods or services (’cross-class protection’) where such use would allow a third party to take unfair advantage of the distinctive nature of the mark or might be detrimental to the imitated mark. However, reputation is not valid grounds for pre-registration administrative opposition under the existing system.
In order to have a trademark declared invalid on the grounds that it infringes an earlier reputed or well-known mark, the only available option is invalidity proceedings through one of the 12 specialist IP courts, as provided by Article 12(2)(e) of the code.
This has an impact on costs; some may also question the fact that it is the courts, rather than the Patent and Trademark Office, which issue opinions on the reputation of a trademark. However, this is understandable in view of the large share of the market reserved – in theory – for owners of well-known marks;
and further since the legislation does not define what constitutes a ‘well-known trademark’ or provide for special registration of such marks.
The rationale for cross-class protection was recently well stated by the Court of Milan. The court argued that such protection is rooted in the need to “prevent parasitic appropriation of attractive messages communicated by the trademark with a reputation” ( MAX & CO / MAX & LO, February 14 2011). However, it also mentioned “identical or similar goods”, as if to underline the fact that protection of a wellknown trademark also applies beyond cases of cross-class protection.
It is impossible to speak of the protection of a well-known trademark in Italy without also referring to the parallel development of jurisprudence on similarity between goods and services. There is similarity between products if they might credibly be judged to be attributable to the same source of origin.
This line of argument was developed in order to protect the fashion industry and resulted in a widening of the criterion for similarity. This in turn brought with it a risk of confusion in terms of the manner in which the trademark is used, entrepreneurial behavior and possible target markets.
This notion of similarity between products has gained increasing acceptance, to the point where today, recourse to cross-class protection based on the existence of the requirements for protection of a well-known trademark (ie, reputation, unfair advantage or detriment to the well-known mark) is rare (eg, Peugeot, Court of Vicenza, July 6 1998 or AGIP , Court of Milan, March 4 1999).
Even in cases apparently far removed from the fashion industry (Pirelli, Court of Monza, July 8 1999), the expansion of a trademark known for tyres and rubber to sectors closely associated with fashion allowed the conclusion – without referring to any particular arguments based on unfair advantage or detriment to reputation – that cosmetics and perfumes could fall within the scope of protection of the trademark in question.
In a number of cases – all issued over the past five years and largely concerning the fashion sector – the courts dealt with well-known trademarks by issuing decisionsbased essentially on the similarity of goods rather than on the principles regulating cross-class protection.
In MAX & CO, the court held that the products being compared were identical. The court’s evaluation of the reputation of the trademark was carried out in order to determine whether a family of such marks existed, and thus to reinforce the distinctive capacity of the trademark.
In a June 24 2010 decision the Court of Milan ruled on an application for invalidity due to non-use of the DAMIANI trademark, which had been subsequently registered in Class 25 by a third party, but was used and considered as having a reputation for jewellery (Class 14). In its decision the court stated: “The reputation of the trademark of the respondent is such as to allow an assumption that a very large number of consumers would immediately associate it with the tradition of quality, refinement and elegance that characterises the goods of the group, even where the trademark is used for goods of other classes. This phenomenon would apply even more in cases where a similar use is made of goods in a class that is in some way similar to that in which the mark is very well known. It should be stressed that we are definitely convinced that a garment or accessory, such as a bag or scarf, bearing the DAMIANI trademark or the DD DAMIANI
trademark would allow the consumer to establish a link with the business activity of the respondent company, its creative capacity and the high quality of its products.”
This broadly defined concept of similarity between products does not exist in an EU context. However, in Intel (C-252/7, November 27 2008) the Court of Justice of the European Union stated that in case of infringement of a well-known trademark, the existence of a link between it and the
infringing sign must be established. The establishment of this link requires, among other things, an examination of the nature of the goods bearing the mark and their closeness in terms of classes of goods.
The approach taken by the Italian judiciary explains the decision in Damiani: “in regard to a trademark that has achieved a reputation, the possibility of [a declaration that it has lapsed due to non-use] could not be countenanced, since it must be assumed that, if one concedes that the distinctive nature of the trademark can be protected even in the case of goods that do not fall within the scope of protection of the registration, it would make no sense to speak of a hypothetical
lapse in the case of partial non-use, in other words for different products.”
This position was already taken by the Rome Court of Appeal in its December 9 2008 decision. The conclusion was almost certainly grounded in the principle that court proceedings should be kept as brief as possible, but does not appear to be in line with the regulatory framework and would
be difficult to imagine in an EU context.
Also relevant is the TOSCA BLU decision (European Court of First Instance, July 11 2007), as stated in the grounds given by the Court of Bergamo in an August 26 2008 judgment: “garments and leather goods on the one hand and perfume goods on the other cannot be considered similar given they are different in nature, purpose and use.” The court had ruled out the reputation of the
earlier TOSCA trademark for perfumes (unfortunately, we shall never know what the court would have ruled had the reputation of the earlier trademark been recognised).
In a recent case outside the fashion industry, Italian band Elio e le Storie Tese had used, on the cover of a CD, a distinctive sign typical of Deutsche Grammophon, a leading German record company well known in the classical music field (Court of Milan, December 31 2009). The case
involved similar products, but signs that were unlikely to cause confusion: the name of the Italian band written inside the crest was sufficient to prevent any real risk of confusion. This led to a stricter application of the principles governing the protection of well-known trademarks.
In particular, the plaintiff invoked the reputation of its own sign in order to allege unfair advantage taken by the band.
However, the court decided that the use of the sign was parodic, and that the defendant had not misled the public and thus had not taken unfair advantage.
This decision would seem to follow in the wake of other rulings on the use of a trademark in a parodic manner, often ornamentally and not as a distinctive sign, and thus without a risk of real confusion – although in such cases the risk of association has always been allowed (AGIP).
The advantage of this jurisprudential tradition is that the level of proof required to establish the reputation of a trademark need not be particularly high, to the extent that in Max Mara the court stated: “In the present case the fact that the trademark has a tangible reputation appears to be by and large accepted, both in view of the long history of the parent company, the widespread presence of its stores throughout the country, and the huge advertising campaign used to promote it down through the years.”
In other cases the elements of proof presented to the court were more substantive, as in Damiani, in which the party claiming repute was able to provide the following evidence:
• historical evidence (market presence since 1920);
• international awards and prizes;
• data on advertising investment;
• data on sponsorships; and
• the presence of single-brand stores in the world’s most important cities.
The documentary evidence filed allowed the court to rule that “a very large number of consumers would immediately associate it with the tradition of quality, refinement and elegance that characterises the products of the group, even where the trademark is used for products of other classes”.
The ruling was made without market research or surveys, which might be considered decisive in other jurisdictions.
The level of proof required in Italy is not particularly high and benefits from a rebuttable presumption that often allows courts to overlook gaps in the evidence that would not be admissible in other jurisdictions. In view of this, and given the amount of jurisprudence on the similarity
between classes of goods that are close (even if not strictly speaking similar), it may be said that the protection offered to reputed or well-known marks is unquestionably high. An examination of unfair advantage or detriment is secondary if arguments remain within the sphere of a likely (or
presumed) target market. Paradoxically, it seems that the Italian courts are more attentive in cases where there is no possibility of confusion between trademarks, but where it is possible to claim
unfair advantage and detriment to the repute to the trademark itself.