Can the interim re-assignment of a trademark be ordered? Well actually it can’t, says the Court of Milan

Article 133 of the Italian IP Code (IPC), providing for the right to request interim re-assignment of unlawfully registered domain names (*), cannot be invoked to obtain the interim re-assignment of trademarks: as a special provision, specifically concerning domain names, its application cannot be extended to other distinctive signs. On this ground the Court of Milan, by decision of 11 January 2016, denied the interim re-assignment of a trademark requested under the above article.

The Court did not rule out the possibility of the interim re-assignment of trademarks being obtained under different provisions of law, namely article 700 of the Code of Civil Procedure. Nevertheless, it did not grant the requested re-assignment on the basis of the latter article either, holding that an interim injunction was enough, in the case at stake, to secure protection of the petitioner’s trademark rights.

The decision – whose full text may be found here – is well-founded. And yet it lends itself to some considerations on the rationale underlying article 133 IPC and, correlatively, on the reason why the interim re-assignment of trademarks would make little sense.

The need for interim re-assignment of domain names stems from the very nature of these signs. Unlike trademarks (which, de facto, may be used by anyone), domain names can only be used upon assignment. No matter who is legally entitled to the sign which the domain name consists of, it is the sole assignee who can materially use the (assigned) domain name.

This means that, in the context of domain names, there is a gap between legal and material entitlement, and that two different entities may have, respectively, the legal and material entitlement to use a sign as a domain name.

Such a gap cannot be filled by injunctions. Indeed, injunctions can effectively prevent the assignee from using its (infringing) domain name. They can do nothing, though, with regard to the assignee “occupying” it, that is to say with regard to curtailment of the material possibility of using the sign which the domain name consists of by the subject who is legally entitled to that sign. For this purpose, a different, specific remedy is necessary. And here is where the need for interim re-assignment of domain names arises.

On the contrary, the material possibility of using a sign as a trademark is totally independent of the existence of third party registrations/trademark applications (the possible filing by a third party of a trademark application for “Coca-Cola” would not have any impact on the material possibility of the Coca-Cola Group using the same sign as a trademark). Thus, interim re-assignment of a trademark (as opposed to final re-assignment under Article 118 IPC) would add very little, if anything, to what an interim injunction already gives to the owner of a trademark.

Riccardo Perotti

(*) The text of Article 133 IPC reads as follows: “The judicial authority can order, in addition to an injunction concerning use in the course of trade of the unlawfully registered domain name, its provisional re-assignment …”.

Court of Milan, 11 January 2016 (interim ruling), Swiss Eco Patent v. VV Italia srl, Veritex Enterprises LLC and Laree Holding LLC

Buddha in a cafè? No trademark for the Italian Supreme Court

On 25 January 2016 the Italian Supreme Court (decision no. 1277, full text here) ruled on the validity of “Buddha Bar” and “Buddha Cafè” trademarks in a three instances dispute in which the defendant came always out winning.

The French companies George V Entertainment e George V Records, respectively owner of Buddha Bar and Buddha Cafè community trademarks, asked the Court of Milan to declare the infringement of their marks by the Italian entrepreneur owner of the “Buddha – Cafè” in Milan. However, both the Tribunal and the Court of Appeal of Milan rejected the claimants’ demand and, indeed, upheld the counter-claim of the defendant affirming the invalidity of the trademarks for lacking of distinctiveness under Article 7, a) of Community Trademark Regulation.

In appealing to the Supreme Court, the French companies argued that their signs would be deemed as particularly evocative and strong trademarks for the reason that they establish an anomalous connection between words which are conceptually disjointed: from the one side Buddha and on the other side Bar and Cafè.

For its part, the Supreme Court pointed out that, in order a sign to be valid pursuant to Article 4 of CTM Regulation, it is not enough that it should have an ‘expressive content’, but it is essential that the meaning of the term must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. This remark concerns the standard law, and therefore it is undisputed.

More perplexingly the Court, as already set forth by both the Tribunal and the Court of Appeal, denied the distinguishing character of the term Buddha assuming that it not only (a) calls to mind a religion but also (b) transmits adhesion or interest to a philosophy and a way of life which characterize a custom pertaining to the most different expressions of the social behavior like literature, music, figurative arts and cuisine, so as to have become a trend.

As a consequence the Court said that the combination between the term “Buddha”’ and the terms “Bar” and “Cafè” is not unusual, because such meeting places are historically linked to specific expressions of the literature and in general of the art of the occidental cultural tradition.

In the light of the above, the Supreme Court dismissed the appeal proposed by the companies George V Entertainment and George V Records, hence confirming the invalidity of their two community trademarks.

The final and debatable outcome is that anyone cannot use the Buddha’s name on an exclusive basis to “denote a product or service”.  From a general perspective the upshot is even more puzzling: the most of characters and movements of culture, literature, art, and philosophy used to hang out at cafès, then, following this decision of the Supreme Court, none of the term referred to them should never be registered as a denominative trademark in combination with the words “bar” or “cafè” for cafeteria’s products or services.

It should be also noted that the Court, once established the lack of distinctive character, has deemed absorbed – then has failed to consider – the question whether the trademarks are contrary to public policy. Maybe simply affirming the invalidity of such trademarks due to their vilification of Buddhist thought would have been quite logically and reasonably commendable.

Matteo Aiosa

Italian Supreme Court, 26 January 2016, No. 1277, George V Entertainment s.a. and George V Records e.u.r.l. v. Buddha Cafè S.r.l.

Trade Secrets Directive: final text agreed between the European Parliament and the Council of Europe

On 15 December 2015 the European Parliament and the Council of Europe, through their respective internal bodies, the Legal Affairs Committee (JURI) and the Committee of Permanent Representatives (COREPER), reached an agreement on the final draft of the Directive (available here, see also our previous comment on the EU Commision’s proposal here).

The final version of the text was endorsed by the JURI on 28th January 2016. The European Parliament shall vote upon it in plenary session. Subsequently, the text shall be submitted to the Council of Europe for final revisions.

Following these steps, the European Member States will have 24 months to transpose the Directive. This time period will begin from the date of publication of the Directive in the Official Journal of the European Union, which is not due before March or April 2016.

During the negotiations, one of the main issues of debate between the European Parliament and the Council of Europe concerned the necessity to strike a balance between, on the one hand, the right of information, the freedom of expression and investigative journalism (so-called “whistle-blowing”) and, on the other hand, the protection of trade secrets.

For this purpose, the final text provides for guarantees for the preservation of each of these fundamental rights and strengthens the position of whistle-blowers, by stating, at Art. 1, that the Directive “shall not affect the exercise of the right of freedom of expression and information” and, at art. 4, that “the measures, procedures and remedies provided in this Directive are dismissed when the alleged acquisition, use or disclosure of trade secret was carried outfor revealing a misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest”.

Finally, the Directive will guarantee that its rules will not create unjustified barriers to worker’s mobility. Indeed, as underlined by the JURI, the Directive specifies, at Art. 1, that rules protecting trade secrets will not “[limit] employees’ use of the experience and skills honestly acquired in the normal course of their employment”, and that rules should not “[impose] any additional restrictions on employees in their employment contracts other than in accordance with EU or national law”.

Alessandro Massolo

Researcher at Osservatorio di proprietà intellettuale, concorrenza e comunicazioni, LUISS Guido Carli

The EU trademark reform package has been definitively approved

On 15 December 2015 the European Parliament approved on second-reading the reform of the european trademark system. The reform consists first of all of the replacement of the existing Trademarks Directive 2008/95/EC with the new Directive 2015/2436/EU (available here, the “Directive”), which has been published in the Official Journal of the European Union on 23 December 2015.

The Directive entered into force on 12 January 2016, 20 days after its publication, but the Member States will have 3 years to transpose its provisions into their national laws. According to Article 55 of the Directive, Directive 2008/95/EC is repealed but with effect from 15 January 2019.

On the other hand the Regulation (EU) n. 2015/2424 (available here, the “Regulation”), amending the Community Trademark Regulation 2009/207/EC and repealing the Commission Regulation n. 2869/1995 on the fees payable to the OHIM, has been published in the Official Journal of the European Union on 24 December 2015. The Regulation will enter into force on 23 March 2016, 90 days after its publication.

While the provisions of the Regulation concerning community trademarks will obviously directly enter into force, those of the Directive concerning national trademarks may undergo changes during the process of transposition into the various domestic laws (as it happened in Italy, e.g. with the provision concerning the obligation of the licensee to use the trademark to distinguish goods or services identical – in quality – to those placed on the market by the owner or by other licensee, an obligation which was not foreseen by the Directive 2008/95/EC).

The main amendments introduced by the reform (for our previous comment on the reform see here) can be summarized as follows:

  • the replacement of the names “Office for Harmonization in the Internal Market” and “community trademark” with “European Union Intellectual Property Office” (“EUIPO”) and “European Union trade mark” (“EU trade mark”) (Art. 1 point 1 and 7 of the Regulation);
  • the repeal of the requirement of graphic representability from the trademark’s definition and its replacement with the provision that a sign can be represented in any manner, not necessarily graphic, enabling the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor (Art. 3 lett. b of the Directive and Art. 1 point 8 of the Regulation);
  • the extension of the absolute grounds of refusal or invalidity of the registration provided for signs constituted by a shape also to signs constituted by «another characteristic», i.e. to signs constituted for example by a smell, a sound or a colour, which will not be registrable if that characteristic is considered imposed by the nature of the product, or necessary to obtain a technical result or giving substantial value to the product; think, for example,  to a  typical alarm sound whose registration is claimed  for home-surveillance apparels (Art. 4.1 lett. e of the Directive and Art. 1 point 8 of the Regulation);
  • the codification of the principles adopted by the CJEU as concerns the renowned trademarks about the application of their protection also when the sign is used for products or services which are identical or similar to those for which the trademark is registered (Art. 5.3 lett. a and 10.2 lett. c of the Directive and Art. 1 point 10 lett. b and point 11 of the Regulation);
  • the addition, to the provision concerning the rights conferred by the registered trademark, of the specification that the owner of the trademark may also prohibit the use of the sign as a trade or company name and the use of the sign in comparative advertising, if made in a way which is contrary to the Directive 2006/114/EC (Art. 10.3 lett. d and f of the Directive and Art. 1 point 11 of the Regulation);
  • the introduction of provisions on the goods in transit in the EU concerning the faculty for the owner of the trademark to prevent third parties from bringing fake goods, in the course of trade, into the Member State where the trademark is registered (Art. 10.4 of the Directive and Art. 1 point 11 of the Regulation);
  • the amendments to the provision concerning the limitation of the effects of a trademark consisting in the specification that the owner is not entitled to prohibit to a third party to use in the course of trade the name or the address if the third party is a natural person (Art. 14.1 of the Directive and Art. 1 point 13 of the Regulation);
  • the addition of the provision that the owner is not entitled to prohibit a third party from using in the course of trade signs or indications which are “not distinctive” (Art. 14.1 of the Directive and Art. 1 point 13 of the Regulation);
  • the provision that applications for EU trademarks can be filed only at the EUIPO (Art. 1 point 25 of the Regulation);
  • the addition of provisions concerning the designation and classification of goods and services according to which they have to be identified by the applicant with sufficient clarity and precision in order to determine the extent of the protection sought (Art. 39 of the Directive and Art. 1 point 28 of the Regulation).

Among all the new provisions, those on the goods in transit in the EU have been so far the most criticized, and are however those which have undergone most changes before the approval of the final text of the Directive and of the Regulation.

Moreover, it is not yet fully clear the significance of the provision according to which the entitlement of the owner shall «lapse» (in the italian text: «si estingue», in the french text «s’éteint», in the german text «erlischt», in the spanish one «extinguirá», etc.) if during the proceedings to determine whether the registered trade mark has been infringed, evidence is provided by the «declarant» (i.e. the defendant, holder of the goods) that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. Probably the only reasonable meaning that can be attributed to this provision is that if that evidence is provided, the owner cannot bring future actions to prohibit the marketing of the same branded goods.

Sara Caselli