The film ‘JOY’, produced by 20th Century Fox, came out in Italian cinemas in 2015. It tells the story of Joy Mangano, played by actress Jennifer Lawrence, a housewife who invented a particular type of mop head with fabric loops for washing floors and went on to become a successful entrepreneur.
In the Italian version, the film dubbers decided to translate the name, no fewer than 40 times, of the original invention ‘Miracle Mop’ with the word ‘mocio’, by which they meant a generic mop for cleaning floors. In actual fact ‘Mocio’ is a trademark registered in 1978 by the German group Vileda, which petitioned the Court of Milan to block the distribution of the film before it could make its appearance in Italian homes.
Substantially, Vileda demanded the withdrawal of the film from the market and the publication of the Court’s decision or, alternatively, the dissemination of the film accompanied by a notice acknowledging the claimant’s trademark rights.
20th Century Fox, by contrast, maintained that the sign ‘Mocio’ was invalid ab origine due to lack of distinctiveness and/or genericization, as well as arguing that in any case they could not be charged with any infringement, given the descriptive use of the sign and their conduct, which was consistent with professional correctness.
The decision was bittersweet for both sides.
In its ruling dated 18 May 2016, the Court recognized the validity of the trademark ‘Mocio’ and the non- genericization of the same, as notwithstanding the common usage of the term consumers still identified a connection between the product and the manufacturer Vileda. Moreover, the latter demonstrated a “sufficiently vigilant” attitude in protecting the trademark.
It was further ruled that the unauthorized use, no fewer than 40 times, of the term ‘mocio’, complained of by Vileda, in the dubbed Italian version of the film ‘Joy’, does not constitute conduct likely to harm the trademark, since that use was judged to be consistent with professional correctness, despite taking place within the scope of a business undertaking: the use of another’s trademark in literary, scientific and artistic works, such as a cinematographic work, can be considered a ‘civil’ rather than commercial use, thus ruling out any illegality. Finally, no parasitic or defamatory conduct detrimental to Vileda could be discerned, as the film did not use the term ‘mocio’ in a critical or parodistic manner.
From now on, it could be costly to speak carelessly of ‘Mocio’ without a reason!
© BUGNION S.p.A. – September 2016