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

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