Can I have a Big Mac – or should I now say “layered double cheeseburger”? Amid non-use and well-known facts.

This past January, the revocation of McDonald’s “BIG MAC” word EU trade mark for non-use  was widely reported, both among IP aficionados (here, here, here and here) and in the media (here, here and here). The EUIPO decision (Cancellation No 14 788 C) can be read here.

A few days later, McDonald’s arch-rival Burger King temporarily renamed the sandwiches on the menu of its Swedish operation “Not Big Mac’s” (see the article on The Guardian, here). The opportunity for a poignant joke was evidently too “juicy” to be missed (it would appear that the video of Burger King’s Swedish stunt is not available on YouTube any longer, but you can still see it here).

big mac

Unsurprisingly, McDonald’s has recently filed an appeal against the EUIPO Cancellation Division’s decision (see here).

Waiting to see what the Boards of Appeal will eventually decide, the “BIG MAC” decision offers an interesting chance to discuss the role of evidence and of “well-known facts” in the assessment of (non-)use and reputation of trade marks in the EU.

The EUIPO decision

McDonald’s filed the “BIG MAC” word EU trade mark (No. 62638) for goods and services in classes 29, 30 and 42, which included “meat sandwiches“.

Supermac’s, an Irish burger chain, brought an application under Article 58(1)(a) of the EUTMR, requesting the revocation of “BIG MAC” in its entirety, arguing that the mark was not put to genuine use during a continuous period of five years in the EU. The application for revocation followed McDonald’s own opposition against an EU trade mark application for “SUPERMAC’S”.

In reply, McDonald’s provided the following evidence of genuine use:

  • 3 affidavits signed by McDonald’s representatives claiming significant sales of “Big Mac” sandwiches in EU Member States;
  • brochures and printouts of advertising posters, packaging and menus showing “Big Mac” sandwiches;
  • printouts from McDonald’s official websites for many (18) EU Member States, depicting, among others, “Big Mac” sandwiches; and
  • a printout from the English version of Wikipedia, providing information, nutritional values and history on the “Big Mac” sandwich.

Supermac’s argued that the evidence of use submitted by McDonald’s did not prove that the “BIG MAC” mark was put to genuine use “for anything other than sandwiches“, thus allowing that use for sandwiches would be proved.

However, the Cancellation Division found that the evidence submitted was insufficient to establish genuine use of the trade mark for all products and services. In particular, the Cancellation Division noted that:

  • ex parte affidavits, although explicitly allowed as means of evidence before the EUIPO, are “generally given less weight than independent evidence“;
  • practically all evidence submitted originated from the EUTM proprietor itself;
  • the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use “unless it shows also the place, time and extent of use or unless this information is otherwise provided“;
  • in this regard, the EUTM proprietor could have provided records of internet traffic, hits, or online orders; however, the printouts submitted carried “no information of a single order being placed“;
  • Wikipedia entries cannot be considered a reliable source of information, as they can be amended by users and may be relevant only if supported by other pieces of evidence; and
  • a declaration by the applicant itself concluding that the evidence submitted was sufficient to prove use of the trade mark in relation to some of the goods (i.e. sandwiches) could not have any effect on the Office’s findings.

On these grounds, the Cancellation Division revoked the “BIG MAC” trade mark in its entirety.

A bitter pill (or “bite” as Italians would say) for the trade mark proprietor?

Following the publication of the decision, many comments highlighted how, although ostensibly strict, the Cancellation Division provided helpful guidance to trade mark proprietors on the kind of evidence that would be needed to show genuine use (here, here, here and here).

In the context of opposition or cancellation proceedings, it is quite common to rely, among others, on affidavits and printouts from company websites and online sources (such as Wikipedia) as evidence of use and reputation. However, the “Big Mac” decision suggests that this may be not enough.

It is most likely that McDonald’s will now try to submit additional evidence before the Board of Appeal, along the lines suggested in the cancellation decision. According to Art. 27 of the EUTMDR, this could be allowed since: “the Board of Appeal may accept facts or evidence submitted for the first time before it” provided that “they are, on the face of it, likely to be relevant for the outcome of the case; and […] they are merely supplementing relevant facts and evidence which had already been submitted in due time“.

In any case, leaving aside the inherent limits of the evidence submitted by the trade mark proprietor, the outcome of the “BIG MAC” decision seems somewhat counter-intuitive.

After all, Big Mac is one of (if not “the”) signature sandwiches of the largest restaurant chain in the world, and it has been sold continuously for the past fifty years (WARNING: these are Wikipedia facts!). Big Mac is such a globally wide-spread product that, in the late 80’s, The Economist developed the “Big Mac index” using the different local prices of the sandwich to measure buying power and currency misalignments across the world. The “Big Mac index” has been used and updated for more than 30 years (for more Burgernomics, see here).

big mac index

One may thus wonder: how can such a “famous” trade mark be legitimately revoked because of insufficient evidence of genuine use, at least in relation to some of the goods and services (notably: hamburger sandwiches!)?

Perhaps, the doctrine of “well-known facts” (in Italian, the so-called “fatti notori“) could (or should) have played a bigger role in the reasoning of the Cancellation Division. In fact, the CJEU case law on trade marks suggests that well-known facts can be taken into account when assessing elements such as reputation, likelihood of confusion and distinctiveness.

For instance, in the Picasso/Picaro case, the General Court argued that “the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources. […] Article 74(1) of Regulation No 40/94 cannot have the purpose of compelling the opposition division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality. Nor is it intended to require the parties to opposition proceedings to put forward before OHIM every well-known fact which might possibly be relevant to the decision to be adopted” (T-185/02, 22 June 2004, Claude Ruiz-Picasso and Others/OHIM; see also T-623/11, 9 April 2014, Pico Food GmbH/Bogumił Sobieraj, § 19).

Along the same lines, the General Court more recently allowed that “where the Board of Appeal finds that the mark applied for is not intrinsically distinctive, it may base its analysis on well-known facts, namely facts resulting from the generally acquired practical experience of marketing products of wide consumption, which facts are likely to be known to any person” (T-618/14, 29 June 2015, Grupo Bimbo, SAB de CV/OHIM, free translation from Spanish).

In Italy, this principle is enshrined in Art. 115(2) of the Code of Civil Procedure, which provides that “the judge may, without the need for proof, base its decision on facts which are part of the common knowledge“.

And, when considering the distinctiveness of Apple’s device trademark in the context of opposition proceedings, the same Italian Patent and Trademark Office (“IPTO”) argued that “although on the basis of the evidence on file it is not possible to assess the percentage of the relevant public which purchases the products and services distinguished by the […] trade mark […] the [reputation of the] trade mark consisting in the representation of an apple bitten on the right side belongs to the category of well-known facts” (IPTO decision 193/2016 of 20 May 2016, in the opposition No. 1083/2013, BITTEN APPLE WITH LEAF/BITTEN PEAR WITH LEAF§§33-34, here; see also IPTO decision 340/2017 of 21 September 2017, in the opposition No. 959/2014, AppleFace§§ 30-31, here).

A similar stance was taken also in relation to the “DECATHLON PLAY MORE PAY LESS” trade mark, whose reputation was held to be “in the public domain, so it does not need a specific burden of proof on behalf of the opponent” (IPTO decision 40/2015 of 10 February 2015, DECATHLON PLAY MORE PAY LESS/DECATHLON ITALY; on the IPTO practice on well-known facts, please refer also to the comments on the SPRINT portal by Prof. Stefano Sandri: here, here and here, all in Italian).

Of course, this is not to suggest that the burden of proof of genuine use should be lifted entirely when the trade mark at stake is so-to-say “famous”. However, in the assessment of the evidence on trade mark aspects such as genuine use or reputation, administrative bodies and courts should take into account the facts that “are likely to be known by anyone or which may be learnt from generally accessible sources“. Amongst these – it could be argued – one may count the continuous use of the “BIG MAC” word trade mark in relation to (at least) sandwiches in the EU. And this especially in a case where the applicant of the revocation action itself acknowledged that the trade mark was genuinely used in relation to these goods.

Finally, on the relevance of written statements and affidavits before the EUIPO, we note that Art. 97(1)(f) of the EUTMR, provides that “in any proceedings before the Office, the means of giving or obtaining evidence shall include […] statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up“. This provision implies that the admissibility, the formal requirements and the probative value of written statements and affidavits are tied to the law of the country where they were drawn up. To take into account the different approaches, a study on the regimes on written statements in several EU Member States was commissioned by the EUIPO and can be found here.

Giovanni Trabucco

EUIPO Cancellation Division, Cancellation No. 14 788 C, Supermac’s (Holdings) Ltd vs. McDonald’s International Property Company, Ltd., 11 January 2019

Peppa Pig meets Tobbia – a tale of pigs and tapirs

Peppa Pig is a children’s animated TV series that traces the adventures of Peppa, her family and friends. Peppa is actually an animal – a pig that possesses all the human traits and so do all the animals in the series – they speak, read, go to school, drive and do all we humans do. As of 2012 Entertainment One UK Ltd and Astley Baker Davies Ltd, the entities behind Peppa Pig, hold the following registered EU figurative trade mark for, among others, “clothing, footwear, headgear” in Class 25 of the Nice Agreement:

download (1)

In 2013, Mr Xianhao Pan residing in Rome (Italy) succeeded in registering the following EU figurative mark for “clothing, footwear, headgear” in Class 25 of the Nice Agreement:

download

A few years later, in 2015, Entertainment One UK Ltd and Astley Baker Davies Ltd initiated an invalidity action against Mr Xianhao Pan based on Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

Peppa Pigs’ creators argued that considering the complete identity of the goods, the two signs are confusingly similar to the extent that the TOBBIA trade mark had to be cancelled.

Judgment of the General Court of the EU (T-777/17)

On 21 March 2019, the General Court of the EU ruled that likelihood of confusion between the two marks exists and therefore the First Board of Appeal was correct in upholding the appeal and invalidating the TOBBIA trade mark (here).

Setting aside some preliminary procedural issues the meat of the General Court judgment was the comparison of the two signs. As usual, this had to be done taking into account the visual, phonetic and conceptual similarities between the two and evaluating the overall impression that the signs produce.

The Applicant before the Court, in this case Mr Xianhao Pan, insisted that there were no similarities between the two signs emphasising the fact that the animal in the TOBBIA mark is indeed a tapir as opposed to a pig – the animal depicted in the PEPPA PIG mark.

The Court admitted that the signs at issue differ in certain figurative elements: the colour range; the fact that the TOBBIA mark animal was in trousers, while the PEPPA PIG mark animal wore a dress; the PEPPA PIG mark had a tail and its arms were positioned in a different way as compared to the TOBBIA mark animal. Yet, the Court insisted that these differences were not capable of outweighing the similarities. Considering that the relevant public is the general one, which does not proceed to analyse all the various details of the marks but perceives them as a whole, the First Board correctly assessed that the marks were visually similar. The Board held that both signs depicted an anthropomorphic animal, namely a pig. The depiction of the head and snout were nearly identical, as well as the shape of the head and further elements on the face of the animals. The differences between the two were appreciated, but nevertheless the visual similarities were more.

The discussion on phonetic comparison followed the classical lines and confirmed some degree of correlation.

As far as the conceptual analysis is concerned, the Court was clear that that the general European public would perceive the two animals as a pig and thus conceptual similarity was also present.

All in all, the identity of the goods coupled with the similarity of the signs led to a ruling in favour of PEPPA PIG and a finding of likelihood of confusion.

An interesting discussion was brought at this stage by the Applicant in relation to the type of the animal in its TOBBIA mark. It was argued that the general public would be capable of recognising the animal in the TOBBIA trade mark as a tapir, which would have allegedly sufficed in drawing the line between the two signs. Well, the Court was certainly not convinced as it stated that the assessment of the similarity between the marks would in no way be affected “whether the public identifies the graphic elements of the two marks as two pigs or two tapirs.”

One may wonder on what ground would one even think about bringing the outlandish argument that the animal represents a tapir, which is an animal particularly well known to the public. Well, seems like the Applicant (or at least, its legal representatives), resident in Rome (Italy) is a fan of the Italian TV program Striscia la notizia”, which in line with its satirical tone, awards public figures with a price in the form of a small statute for errors, omissions to keep promises or basic embarrassing situations. Not surprisingly, this statute takes the form of a tapir and looks like this:

Tapiro d'oro

 

As entertaining as this tale of pigs and tapirs may be, the General Court was neither impressed nor convinced. It correctly pointed out the irrelevance of such argument as the relevant public at stake was the general European public (and not only the Italian one) taking into consideration the fact that the TOBBIA trade mark was a European one.

Comment

The case does not entail any ground-breaking analysis, nor particularly peculiar application of rarely raised grounds such as bad faith or intricate fiduciary relationship conundrums. Instead, it is a classic likelihood of confusion discussion comparing goods (which in the present case were even identical) and signs.

That said and regardless of how much weight one would give to the shared elements between the two signs (the presence of an anthropomorphic animals with identically shaped heads), one must admit that the two signs in fact bear rather minor similarities. The legal team of the PEPPA PIG trade mark would have been wise to raise further grounds of invalidity, namely to invoke Article 53(1)(a) in conjunction with Article 8(5) EUTMR, which provides famous marks such as PEPPA PIG with an extra layer of protection. In these cases lesser degree of signs’ similarity is required as compared to the classical likelihood of confusion situations under Article 8(1)(b) EUTMR. This would have guaranteed the ultimate success for the Peppa Pig creators provided that the relevant section of the public makes a mere connection between the marks, i.e. it establishes a link between them. This is a well-established principle following long-standing judgments of the CJEU in the Adidas (C-408/01), as well as the Intel cases (C-252/07).

Nevertheless, both the First Board of EUIPO and the General Court are to be complimented for having employed a very adequate level of common sense and rightly held that the TOBBIA mark shall be invalid in light of the PEPPA PIG mark. The analysis avoids crude formalistic application of dry legal principles, which may have risked resulting in a loss for PEPPA PIG as it is certainly questionable whether the similarity between the signs meets the standard required by Article 8(1)(b) EUTMR. Besides, the TOBBIA mark indeed resembles a poor copy of PEPPA PIG, which is further supported by the fact that the Applicant seems to be a trade mark squatter of children’s brands. A quick search on the EUIPO database reveals that the Applicant has unsuccessfully tried to register the following marks, which regardless of how far detached from childhood one is do certainly ring a bell:

  • Happy duck(filing number 009282161, opposed by, among others, Disney Enterprises Inc.)
  • Sponteboll(filing number 009482175, opposed by Viacom International Inc.)
  • Doggy dog(filing number 010776177, opposed by, among others, Turner Entertainment Co.)

Alina Trapova

General Court (Eighth Chamber), 21 march 2019, Xianhao Pan v European Union Intellectual Property Office (EUIPO), Case T-777/17

Two recent decisions on selective distribution and infringement of luxury trademarks from the Court of Milan

The Court of Milan issued two recent decisions in similar cases of selective distribution of cosmetic products bearing luxury trademarks, finding in both cases trademark infringement for the sale of products by unauthorized distributors.

1. The l’Oreal case

Facts

In the first decision (Italian text here), the case concerned an urgent action brought by l’Oreal Italia and Helena Rubinstein Italia (jointly referred as “l’Oreal”), two Italian subsidiaries of l’Oreal Group, against IDS International Drugstore Italia (“IDS Italia”) for trademark infringement.

L’Oreal is the licensee of a series of luxury trademarks (e.g., Armani, Cacharel, Ralph Lauren, Diesel, Yves Saint Laurent, etc.), and set up a selective distribution system for the sale of cosmetic products. In particular, l’Oreal selective distribution was based on the following quality elements:

  1. brick-and-mortar retail: (i) location, display and fitting of the points of sale; (ii) the (necessary) presence of products bearing competitors’ brands; (iii) the way in which products are presented at the point of sale (dedicated space, cleaning, etc.); (iv) the professional qualification and standing of the staff involved in the sales, and consulting and demonstration services.
  2. online: (i) the localization and presentation of the website (graphic quality, visual appearance of the home page); (ii) the space dedicated to selective luxury perfumery/cosmetics within the website and its aesthetic quality; (iii) the online customer advice service, in as many languages as are offered by the website; (iv) professional qualification of the consultants, equal to that required for physical points of sale; (v) the conditions and terms of payment, the conditions of storage of goods, transport and shipping.
  3. L’Oreal group developed a system of product traceability to map the circulation of each product in the market, that is based on an “anti-diversion code” (“AD code”).

IDS Italia, part of Auchan Group, is a major retailer and manages a group of drugstores under the brand “Lillapois”.

L’Oreal objected to IDS Italia the sale of products bearing its licensed trademarks through its drugstores and on its own e-commerce website: products were displayed in a messy manner, with strong discounts, and placing stickers on the AD codes. Moreover, some of the products were imported from non-EEA countries.

IDS objected that: (i) they had a selective distribution agreement with L’Oreal Luxe (a luxury division of the group), that covered some of the contested trademarks; (ii) market surveys proved that Lillapois points of sale are considered premium stores by consumers; (iii) the intention of the complainants is in fact to restrict competition; (iv) all products were initially marketed in the EEA territory, as confirmed by IDS’s providers; (v) the selective distribution system could not benefit from the provisions of Reg. 330/2010 since parallel selective distribution systems were in place; (vi) they only placed anti-theft stickers.

The Court’s findings

The Court found that:

  • IDS did not prove that the products were marketed in the EEA with the trademark owner’s consent (and in particular that its suppliers purchased the products from the trademark owner or another authorised distributor in the EEA). The relevant burden of proof is on IDS. Indeed, l’Oreal applied a selective distribution and not an exclusive distribution system (only the latter would require the trademark owner to prove the absent consent to the marketing of the products in the EEA, based on Davidoff, CJEU C-414/99 – C-416/99);
  • L’Oreal set up a legitimate selective distribution according to Reg. UE 330/2010, as its relevant terms of sale define the quality and localisation of the point of sales, the characteristics of the display of the stores and the minimum professional requirements of authorized resellers. Thus, proving the objective and non-discriminatory nature of said criteria (based on Coty, CJEU C-230/2016);
  • The existence of a selective distribution may account to a legitimate reason for excluding the trademark exhaustion, if:

(a) the product is a luxury or premium item.

(b) prejudice to the premium image of the trademark occurs, due to the marketing of the products by entities not included in the selective distribution network (Copad, CJEU C-59/08), in particular based on the type of products, the volume of sales to resellers outside the selective distribution, the forms of distribution normally applied.

In this last regard, the Court observed that the criteria identified by trademark owner for the selective distribution system are not the only legitimate standards to be considered (see the Chantecler case, Court of Milan, 17 March 2016, full text here, and Peak Holding, CJEU C-16/03). Similarly, cash & carry channels are not themselves contrary to a luxury image. Rather, it is necessary to demonstrate that the particular sale modalities are impairing the trademark’s prestigious image. The Court found that IDS points of sale were too similar to discount stores, with low-quality furniture, poor lightings, close-up shelves with very different products (from detergents to toilet paper). Thus, they were able to impair the prestigious image of the trademarks.

2. The Landoll case

Facts

The second case (full text, here) concerns an urgent action brought by Landoll S.r.l., an Italian hair and body cosmetic manufacturer that owns the trademarks Nashi and Nashi Argan. Landoll set up a selective distribution system for its products, which includes agents, distributors, and resellers selling Landoll products to professional clients.

Landoll objected to MECS s.r.l. the sale of its products on a third-party e-commerce platform and on its own website – ermeshop.com – without being part of Landoll selective distribution network. Previously, in 2017, Landoll already sent a warning letter to Mecs, that at that time undertook to cease the sale of Landoll products.

Mecs denied this last circumstance and objected that it purchased Landoll products in good faith from a distributor.

The Court’s findings

The Court found that:

  • Landoll set up a legitimate selective distribution according to Reg. UE 330/2010, as this system is aimed at ensuring the professional preparation and training of the authorized distributors and the proper use of products for meeting the users’ needs, thus protecting the prestigious image of the Landoll products. The qualitative criteria set out by Landoll to select the authorized distributors are coherent with the purpose of protecting the prestigious image of the products, they are applied in a non-discriminatory way and proportioned to the objective sought.
  • The existence of a selective distribution may account to a legitimate reason for excluding the trademark exhaustion, if: (a) the product is a luxury or premium item; (b) a prejudice to the premium image of the trademark occurs due to the marketing of the products by entities not included in the selective distribution (Copad, CJEU C-59/08). In this case, the trademark owner can prohibit unauthorized resellers from selling products purchased from authorized distributors.
  • As regards the prejudice to the prestigious image of the trademark, the third party e-commerce platform used by Mecs, as well as its own website, were presenting the Landoll products in the same manner as any other generic product sold in the store, even of inferior quality, and no professional advice on how to use the products was offered. The Court held that this was enough to cause a prejudice to the trademarks.
  • The good faith of Mecs was excluded, since it received a warning letter, without ceasing the marketing of the Landoll products.
  • Mecs objected that Landoll products were in fact sold by a number of third parties outside the selective distribution network. In this regard, the Court held that the alleged inactivity of the trademark owner vis a vis the sale of products outside its selective distribution network is to be excluded, as Landoll proved to have already brought other legal actions in the past.

The reasoning of the Court is similar in both cases. It fully supports the establishment of selective distribution networks, following the CJEU position, although states that the existence of a selective distribution is not enough for excluding the trademark exhaustion: actual prejudice to the trademark is to be proven. On the other hand, the Landoll case seems in line with the Coty decision, acknowledging the chance of limiting the online resale, if the website is not meeting quality standards necessary to protect the prestigious image of the trademark. And the Court has given some examples on how this can occur. As the Coty case highlighted, this issue is particularly important for marketplaces. They tend to be less exclusive in terms of brand experience. However, if they allow special windows to be created within the marketplace (or special manner of displaying and offering premium products), it might be more difficult arguing a prejudice against the prestigious image of the trademark.

Francesco Banterle

Court of Milan, decision of 19 November 2018, docket no. 38739/2018, L’Oreal Italia S.p.a. and Helena Rubinstein Italia S.p.a. v. IDS International Drugstore Italia S.p.a.

Court of Milan, decision of 18 December 2018, docket no. 44211/2018, Landoll s.r.l. v. Mecs S.r.l.

Two recent CJEU decisions and the fuzzy border between trademarks and designs

While no definite trend toward the approximation of trademark and design law has so far emerged in European case law, two recent decisions of the CJEU relating to designs show how fuzzy the border between trademark and design rights may be.

***.***.***

In Doceram (C-395/16, ECLI:EU:C:2018:172), the CJEU had to interpret the concept of designs subsisting “in features of appearance of a product which are solely dictated by its technical function”, which are excluded from protection under Article 8(1) of Regulation 6/2002 on Community designs (RCD). The Court was asked, in particular, to state whether such exclusion applies even when alternative designs exist which can perform the same technical function, so that the features of the design cannot be considered indispensable for performing said  function.

It is a classic dilemma. As AG Henrik Saugmandsgaard Øe noted in his opinion, in Europe the Courts and legal scholars have given both negative and positive answers.

The position whereby Article 8(1) RCD and the corresponding national provisions only apply when copying the design is the sole way to achieve the technical result is commonly referred to as the “mandatory” (or “multiplicity of forms”) theory. The opinion whereby, to the opposite, it does not matter whether or not alternative designs can fulfil the same function, insofar as the function in question is the sole driver of the shape, is usually referred to as the “causative theory”. In the past the EUIPO has ruled in line with the first theory [also supported by AG Colomer in the opinion submitted in Philips v. Remington (paragraph 34); and followed by the EU General Court in Industrias Francisco Ivars (see paragraph 22)], which is much more favorable to design right holders. Recently it seems to have veered towards the latter. As far as Italy is concerned, there is probably greater support for the “mandatory theory”.

In Doceram the Court (and before the Court AG Saugmandsgaard Øe) endorsed, with little hesitation, the “causative” theory:

if the existence of alternative designs fulfilling the same function as that of the product concerned was sufficient in itself to exclude the application of Article 8(1) of Regulation No 6/2002”, it said,

then

“a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function” (paragraph 30).

 That, added the Court,

“would enable such an operator to benefit, with regard to such a product, from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions, thereby depriving Article 8(1) of its full effectiveness” (ibidem).

By stating this, the CJEU de facto extended to designs the principles it affirmed with regard to trademarks “consisting exclusively of the shape of goods which is necessary to obtain a technical result”.

As is well known, in Philips v. Remington the CJEU stated that the relevant impediment to registration [now contained in Article 4(1)(e)(ii) of Directive 2015/2436] “cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained: which is, mutatis mutandis, what the CJEU said in Doceram.

 ***.***.***

Interestingly, another recent CJEU decision ended up extending the interpretation of provisions concerning trademarks to provisions concerning designs.

In Nintendo v. Bigben (C‑24/16 and C‑25/16, ECLI:EU:C:2017:724), the Court had (inter alia) to issue a preliminary ruling with regard to Article 20(c) RCD, which prevents design right holders from exercising their rights in respect of “acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source”.

The dispute in the main proceedings concerned the use of images of goods corresponding to EU registered designs in the advertisement of goods intended to be used as accessories to the above goods corresponding to EU registered designs. As in the following picture, which shows Nintendo Wii remote controllers, registered as EU designs, together with the charger for such controllers produced and sold by the defendant Bigben.

bigben

In addressing the issue, the Court said that Article 20(c) RCD, insofar as it refers to “acts … compatible  to fair trade practice”, can be interpreted in the light of the case law regarding uses of trademarks made in accordance with “honest practices in industrial or commercial matters” under Article 6(1) of Directive 89/104 [now Article 14(2) of Directive 2015/2436]. And it explicitly applied to designs – again: mutatis mutandis – the principles asserted in Gillette (17 March 2005, C-228/03, ECLI:EU:C:2005:177) with respect to the limitation of trademark rights:

an act of reproduction of a protected design for the purpose of making citations or of teaching is not compatible with fair trade practice … where it is done in such a manner that it gives the impression that there is a commercial connection between the third party and the holder of the rights conferred by those designs, or where the third party, who wishes to rely on that limitation in the course of selling goods that are used jointly with goods corresponding to the protected designs, infringes the rights conferred on the holder of the design protected by Article 19 of Regulation No 6/2002, or where that third party takes unfair advantage of the holder’s commercial repute” (paragraph 80).

Riccardo Perotti

May #hashtags safely rely on trademark protection?

In recent years, trademark offices worldwide have been assisting to a new trend: brand owners are increasingly trying to protect hashtags as trademarks. However, some substantive differences existing between these two figures suggest that trademark protection is most of the time improper – and even unnecessary. This, for a number of reasons.

  1. A hashtag can be defined as the symbol # followed by a word, a phrase or a symbol. Hashtags are used on social media in connection to a certain content to synthetically describe or comment it. They were firstly introduced on Twitter, then the main other social networks followed. It must be emphasized, even for legal purposes, that they are freely usable by anyone.

twitter

Technically, the social network indexes and groups all the contents using the same hashtag. Hashtags function as hyperlinks: by clicking on a single hashtag, the user is redirected to a page where all the contents using the same hashtag have been grouped and organized together by the social network.

From a consumers’ view, hashtags are helpful in following topics and finding contents. From a brand’s view, they are useful to control and attract online consumer traffic and enhance the brand appeal. In particular, hashtags are used in advertising campaigns to redirect users to the company website and social networks, where the consumer experience can be enhanced and the brand loyalty reinforced. From a social network’s view, they are a new way of organizing information and topics.

  1. Let’s come to trademarks. As known, besides their essential legal function of indicating the origin of the product or service covered by the trademark, they can perform, if famous (“with reputation”) other factual functions, such as that of ‘guaranteeing’ the quality of a product or service, or that of supporting advertising of, and investment on, the ‘brand’. However, it must be noted that quite often hashtags are not perceived as trademarks, as they do not perform any of the above functions.

Focusing on the distinctive function, if a sign does not have distinctive character the trademark owner shall retain its exclusive right only by proving that the sign has acquired – typically by strong advertising – a ‘secondary meaning’ – i.e.- the capacity to identify, in the eyes of consumers, the product or service as originating from a firm.

Now, as concerns hashtags, it seems all too evident that, except when the word component is wholly or in part of coincident with a trademark already known on the market (e.g. #cokecanpicks or #CokeZeroSugar, as in the below example), it is indeed hard to say that a hashtag is inherently distinctive: in such cases, it would be normally necessary to prove secondary meaning to secure a valid registration.

coke

In this respect, hashtags shall be considered as a mix of domain names and slogans. As for the top level domain names such as “.com” or “.it”, the symbol “#” is considered as not capable of conferring to the sing any distinctive value. Therefore, if the word or the phrase composing a hashtag are not per se distinctive, the presence of the symbol # cannot save the trademark from being prevented registration for lacking of distinctive character. On the other hand, hashtags are often composed by small phrases and shall, therefore, be compared to slogans. As for slogans, the proof of the existence of a distinctive character is more difficult than for ordinary trademarks, as slogans are usually not perceived as source indicators. Against this background, it seems more efficient to try to secure registration to a phrase or word, and not to the same in the form of a hashtag.

Further, their functional character may prevent hashtags registration as trademarks. The functionality doctrine, based on the ‘imperative of availability’ (“the need to keep free”, “Freihaltebeduerfnis”) prevents to use trademark law for inhibiting legitimate competition by allowing a single company to claim a monopoly either on a descriptive term or a useful product feature. And a product feature is considered functional if it is essential to the use or purpose of a good. Now, as hinted, hashtags function as hyperlinks and tags, to group contents. This function is essential for their success.

In the light of the considerations just submitted registering a hashtag as trademark could be quite difficult. That said, provided that a company succeeds in obtaining trademark registration, its enforcement towards third parties could be difficult for a number of reasons:

a) in most cases, hashtags are not perceived as trademarks. As said, they are typically a form of metadata or tag, through which a word or a phrase becomes a searchable expression on a social network. On the one hand, therefore, it is inevitably that the hashtag registered as trademark is used by all social network users willing to do so. Such users would likely not perceive the hashtag as a trademark, a source indicator, but more likely as a descriptive text or as a tool having a specific function.

Obviously, though, trademark owners have an interest to control the use of their hashtag, if registered as trademark, in order to protect it from dilution and/or consumer confusion with a similar trademark. Here lies one of the most strident paradoxes of hashtag registration as trademarks: as trademark registrants, hashtag owners are encouraged to enjoin unauthorized third parties from using their registered sign. At the same time, it is their interest to encourage social network users to make use of the hashtag for commercial benefits — expand brand awareness, ‘lock in’ consumers, and so on. More precisely, brand owners use hashtags in social media contexts for marketing purposes, often in a way that results detrimental to their distinctive character (and, as a consequence, to their possible enforcement). They convert the hashtag into a means through which the public is encouraged to comment, share and ‘talk’ about the brand and its products or service, while gathering information and data about consumers tastes, preferences and so on. Thus, again, notwithstanding a possible registration, even registered hashtags are hardly used as indicators of origin, but merely as collectors of data and comments (of course not possibly subject to any monopoly).

b) Even when hashtags are used and perceived as trademarks, descriptive use, functionality, legitimate use play in most cases play a crucial role in excluding the existence of a trademark infringement.

Here, the constitutionally ranking principle of freedom of expression would play a role in determining where there is a legitimate use of a hashtag. If people are encouraged to use a hashtag to get involved in a topic and participate to a discussion, their use of the hashtag, as such, shall be considered indeed legitimate under the principle of freedom of expression.

c) Therefore, the sole relevant case when the use of hashtags could be protected under trademark law seems that of competitors adopting hashtags confusingly similar to a hashtag that includes (or corresponds to) a registered trademark. This position seems reflected by the main social networks policies, preventing the use of third parties trademarks when such use creates confusions for consumers.

But even in such a case, there is room to affirm that the use of an identical or similar hashtag by a competitor is legitimate. Considering that the hashtag is a means to tag and categorize contents, the well-known case law on keyword advertising could well apply to a third party use of a registered hashtag. In this context, if the use a third party hashtag by a competitor enhances competition and offers consumes an alternative or a wider range of offer, this use could be considered fair according to the keyword advertising case law.

One last remark. Trademark law is just one of several laws that are relevant to the use of hashtags. Among others, privacy law, consumer law, licensing, image rights and advertising are strictly connected to hashtags use and shall be carefully considered by all users adopting hashtags.

Maria Luigia Franceschelli

Shape trademarks: the Court of Florence’s innovative interpretation of “substantial value”

The Court of Florence recently expressed an interesting view on the interpretation of absolute grounds of registration invalidity provided for signs constituted by the shape of a product, and, in particular, substantial value.

The case concerned the shape of the world wide famous Hermes’ “KELLY” and “BIRKIN” bags, the shape of which was registered as 3D trademark in Italy and before the EUIPO.

Capture

Hermes alleged the infringement of its famous trademarks by an Italian company offering for sale bags highly similar to the ones protected with Hermes shape trademarks. The alleged infringer resisted claiming, as usual in these cases,  that the above trademarks were invalid since, besides other things, they consist of a shape giving substantial value to the bag.

The Court of Florence dismissed such claim, excluding the existence of a substantial value with an unusual (and deeply interesting) interpretation of this prevention.

Firstly, the decision (available heredefines substantial value as a real and concrete aesthetic plus-value – relevant per se to the product, being instead irrelevant the existence of any particular decoration or added part – that cannot be separated from the product itself and is capable of prevailing on the product’s shape features that are necessary to its function.

Then, the Court expressly excluded that the mere ornamental attitude of the product’s appearance could be of relevance in the evaluation on the existence of a substantial value. Differently from the main case law on this ground of refusal (see decision of 15 February 2012 of the Court of Venice on Crocs shoes or decision of 16 June 2015 of the Court of Milan on Flou’s Nathalie bed), the decision essentially denies that substantial value consists in the capability of the shape to influence the consumer’s choice of purchase, so to be itself the main reason why the product is in fact chosen and bought. In the Court’s view, this capability of the object’s shape to catch the consumers’ attention is connected only with trademark reputation.

Only when the aesthetic appearance of the product’s ornamental shape is so relevant to give a particular aesthetic value inseparable from the product itself trademark registration is prevented. Having this interpretation of substantial value in mind, the Court affirmed that “KELLY” and “BIRKIN” bags where valid trademarks as their shape trademark may be separated from the product itself and does not merely consist in the standard appearance of bags.

This decision interestingly tries to plot a demarcation line between substantial value and trademark reputation/distinctiveness that are often overlapped in the context of the discussions on substantial value. The distinction proposed by the Court of Florence could indeed be of help in drafting a clear and new definition of substantial value, whose interpretation is still not crystal clear when applied to real cases. As a matter of fact, and as actually noticed by the Vespa case (see here), the current interpretation of this condition often leads the trademark owner to deny the attractiveness and distinctiveness of the shape of a product when substantial value is under discussion on the basis that an actual recognition of the shape of the product on the market may lead to the assertion of the existence of a substantial value.

The interpretation of the Court of Florence would not fall into this trap and appears to be more logical in the overall context of the trademark protection, as it denies any relevance of the trademark distinctive character in the context of absolute grounds of registration invalidity provided for signs constituted by the shape of the product. This interpretation, although interesting, is however new and currently isolated. While certainly providing food for thought, it downplays the meaning, and legal sense , of the requisite of substantial value as a reason to attract consumers. If only reputation is attractive, what is the meaning, and sense, to verify the occurrence of a substantial value? ‘Substantial’ to what effect?!

Maria Luigia Franceschelli

Court of Florence, case No. 5850/2010, 31 January 2017, Hermes International Scpa, Hermes Sellier SA, Hermes Italie SpA vs. Papini Paolo & C. Snc and Corsini Giorgio di Gianna e Paola Corsini Snc.

The Court of Appeal of Milan and the active role of the ISP in selling infringing services via the e-marketplaces White Pages and Yellow Pages

The liability of the Internet Service Providers (ISPs) is still an unsettled area of the case law both at European and national level, with a lot of recent cases that deal with ISPs and the unauthorized online distribution of audio-visual contents (see CJEU case C-610/15 and Court of Appeal of Rome – case Break Media – and Court of Turin – case Delta TV). Anyway, there is also another side of the case law on the liability of ISPs that deals with the selling of goods and services which infringe IP rights via e-marketplace (the leading case of the CJEU is case C-324/09 L’Oréal Vs eBay). In a recent decision, the Court of Appeal of Milan (here) shed light on the joint liability of the ISP and the professional users of its services.

The case at stake is based on the alleged infringement of the trademarks of some major manufacturers of domestic appliance (Electrolux, Candy, Ariston, Bosch, Hoover, Smeg and others, collectively the “Claimants”) by the company ABB, with others (the “Defendant”) via some adverts on the Italianonline’s websites White Pages and Yellow Pages. ABB offered maintenance and support services for domestic appliances – on the White Pages and Yellow Pages edited by Italiaonline – using the ABB’s registered trademarks “Boschexpert”, “Candyexpert”, Aristonexpert” and so on. The Court of Milan in first instance held that ABB’s trademarks were void and found ABB liable of trademark infringement and unfair competition against the manufacturers, since the consumers were misled by the use of ABB’s trademarks on the real origin of the support and maintenance services. Italiaonline has been found jointly liable of such IP violations and both ABB and Italiaonline have been ordered to jointly pay damages to the Claimants. Italiaonline reached a settlement with the Claimants while ABB appealed the Court’s ruling of first instance.

The Court of Appeal of Milan has confirmed the ruling of the Court of first instance in terms of determination of the illicit conduct and quantification of the damages but has clarified the position of Italiaonline as ISP whose electronic means have been use for committing an IPR infringement. Indeed, in the first instance Italiaonline has been fully indemnified by ABB since ABB had a preeminent role in the illicit conduct. This seemed to ABB inconsistent, since Italiaonline has been declared jointly liable for the same illicit conduct. According to ABB, Italiaonline as a technical ISP is the sole responsible of the search engine for the adverts on the websites White Pages and Yellow Pages, which results are misleading and determining confusion to the consumers.

According to the Court of Appeal, Italianonline’s websites can be considered Information Society Services pursuant to E-commerce Directive (despite the fact the White Pages and the Yellow Pages are published both in paper and in electronic form). This leads to the fact that Italianonline can be considered a host provider pursuant to Article 14 of the E-Commerce Directive for the websites White Pages and Yellow Pages, since it technically hosts on such websites the adverts of its professional clients, such as ABB. More in detail, in this case the ISP cannot invoke the safe harbour provision pursuant to Article 14 of the E-Commerce Directive due to its active role for the third-party adverts in return for payment, where Italiaonline does not merely technically process third party adverts but also edits promotional messages coupled with the third-party adverts and identifies the key-words for its search engine. While playing this active role – according to the Court of Appeals – the ISP is responsible for lack of control and for not having expeditiously removed the infringing adverts after the notices of the Claimants (the earliest ones dated 2003).

With regards to the relation between the infringing activity of ABB and the cooperation of Italialonline, the Court of Appeal found that, even if jointly liable, ABB had effectively a preeminent role in terms of relevance and wilfulness of the conduct and that the joint liability must be evaluated according to Article 2055 of the Italian Civil Code, pursuant to which, where two or more parties are held jointly liable, the party paying the damages can recover from the other parties the pro quota of damages attributable to the level of wilfulness and to the consequences of the conduct of the other parties (so called, right of recourse). The request raised by Italianoneline for indemnification of the damages determined by ABB is considered by the Court of Appeal as a right of recourse aimed at clarifying the pro quota  of responsibility of Italiaonline. The right of recourse is applicable pro quota also to ABB as party paying the damages. In light of this interpretation, the Court of Appeal awarded also to ABB a recourse against Italiaonline equal to the 30% of damages to be paid to the Claimants.

This precedent seems of interest because the Court of Appeal of Milan, while making clear application of the principles set forth by the Court of Justice in the leading European case law L’Oréal Vs eBay (an e-marketplace cannot invoke the safe harbour provisions under E-Commerce Directive if it plays an active role by optimizing and promoting the selling of infringing products or services), has even moved forward by clarifying a possible criterion for the attribution of responsibility between professional users and e-marketplaces. It would be of interest verifying whether the same approach could be adopted by other foreign jurisdictions, since the regime of joint responsibility under tort law seems to be matter of domestic jurisdiction.

Gianluca Campus

Court of Appeal of Milan, case No.  1076/2014, 14 December 2016, Italiaonline Spa Vs ABB Srl and Others (President of the Court: Hon. A.M. Vigorelli; Judge-Rapporteur Hon. F. Fiecconi)

The shape of the worldwide famous Vespa obtains protection in Italy under copyright law

Piaggio, the Italian company producer of the world wide famous Vespa scooter, was recently sued by the Chinese company Zhejiang Zhongneng Industry Group (“ZZIG”) in a quite complex case.

ZZIG offered for sale three scooters named “Revival”, protected by a Community design registration no. 001783655-0002, “Cityzen” and “Ves”, the shape of which was not covered by any registered IP right in Italy or in the European Union.

Capture ZZIG

As to Piaggio, the company owns the Italian 3D trademark no.1556520 claiming priority of the Community trademark no. 011686482, filed on 7 August 2013 and registered on 29 August 2013.

Capture Vespa

When Piaggio obtained the seizure of the three above motorbike models in the context of a Fair held in Milan, the Chinese company started an ordinary proceeding on the merits before the Court of Turin against Piaggio, seeking the declaration of non-infringement of Piaggio Vespa 3D trademark by its “Revival”, “Cityzen” and “Ves” scooters. Besides, it asked a declaration of invalidity of Piaggio’s Vespa trademark, based on the fact that it was anticipated by their design and thus not novel. Also, it held that the 3D trademark was void, as it does not respect the absolute ground for refusal established by the law.

Piaggio resisted and asked the Court of Turin to reject the above claims, declare that the Vespa shape is protected under copyright law, trademark law and unfair competition law and that those rights were infringed by ZIGG three models of scooters. As a matter of fact, Vespa was offered for sale by Piaggio since 1945.

First of all, the Court of Turin declared that the Vespa trademark does not lack of novelty, as it reflects a model of Vespa marketed since 2005, before the commercialization of ZZIG first scooter, i.e. “Cityzen”. Moreover, the Court of Turin excluded the existence of any absolute ground for refusal, stating that its shape was not technical nor standard and not even substantial as the reason why consumers chose the Vespa were not merely aesthetical. Based on these findings, the Court finally affirmed that only the “Ves” scooter constitute an infringement of Piaggio trademark.

This  said, the Court of Turin further held that the Vespa shape is eligible for protection under copyright law, as it is since long time worldwide recognized as an icon of Italian design and style, shown in advertising and movies, presented plenty of times at museum and exhibitions and part of many books, articles, magazines and publications. All considered, safe and sound evidence show that the shape of Vespa is unequivocally believed to be an artistic piece of designs by the main communities of experts worldwide. Nevertheless, the Court held that, again, only Ves scooter infringed Piaggio rights vested on its scooter as it presents features similar to the ones protected both under the Vespa trademark and copyright.

The decision (full text here) is indeed interesting as it critically examines the similarities and differences between the “original” good and the ones that are claimed to be infringing products and, while asserting the eligibility for protection of the Vespa shape both under trademark and copyright law, it excludes infringement for two products through a detailed and careful examination. This narrow approach is indeed interesting because it affirms the principle that the infringement of designs protected under copyright law shall be evaluated with an analytical examination similar to those applied in cases of trademark infringement.

A doubt might remain about the overlapping of trademark and copyright protection. Since the former never expires as long as the product is on the market (plus the subsequent five years, according to Italian law), one might ask what advantage for the right holder might subsist by ‘adding’ a protection limited in time, such as copyright’s. The answer might be: the dual protection functions as a ‘parachute’ for the case that one of the two, in a subsequent Judgement (Appeal or High Court: Cassazione in Italy) should be successfully challenged by a competitor.

Maria Luigia Franceschelli

Court of Turin, case No. 13811/2014, 6 April 2017, Zhejiang Zhongneng Industry Group, Taizhou Zhongneng Import And Export Co. vs Piaggio & c. S.p.a..

HOW MUCH A TRADEMARK SHALL BE USED BY A NON-PROFIT ASSOCIATION TO AVOID BEING DECLARED REVOKED FOR NON-USE? THE SEVERE OPINION OF THE COURT OF BOLOGNA

According to article 24 of the Italian Intellectual Property Code, an Italian trade mark shall be revoked (i) if, within a continuous period of five years, it has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use or (ii) if the use is suspended for the same amount of time.

Not many Italian decisions addressed the question of which uses are considered “genuine” and which is the sufficient amount of use that would put the right-owner safe from any contestation.

The Court of Bologna had the chance to investigate this question in a case (available here) involving a non-profit sailing club that sued a company when it discovered that it had started the production and commercialization of sailing cloths and accessories using the exact same trade mark already registered by the club and had registered a number of identical and similar trademarks for identical products (i.e. sailing accessories and garments).

immagine-iplens-moro

According to the defendants, however, the plaintiff could not enforce its earlier trademark because it had been used on the market in a manner that was not effective. Thus, they counter-claimed to declare it revoked for non-use.

The plaintiff resisted claiming that the use made of the “IL MORO” trademark in the years was genuine and continuous, in line with the purposes of the sailing club and the activities organized by its members. In particular, the plaintiff showed, by filing a number of pictures and invoices, that the trademark was used for clothes, shoes and accessories that were distributed for free during sailing races and similar events.

Bearing in mind that the rationale behind the provision on revocation for non-use is to “clean” the register from those trademark registration preventing third parties from registering and using a name or a logo as trademark in absence in the right owner of any interest in being secured such monopoly – which is indeed a goal consistent with the pro-competitive rationale of the requirement of availability (i.e. the need to keep free) – the case law actually adopts different approaches on the notion of use that is sufficient to evidence the subsistence of said interest.

According to a first theory, any type of use is sufficient, as long as it shows an actual interest of the right holder in continuing to distinguish its products/services on the market. Consequently, only the complete and total cessation, in any mode, of the trademark’s use would cause its revocation. Even a local, restrained in time or intermittent use could be thus considered sufficient (see Court of Milan decision of 10 October 1996, Court of Milan decision of 30 September 2002, Court of Turin decision of 21 December 2004 and Court of Rome decision of 22 May 2003 and, among the leading scholars, A. Vanzetti – V. Di Cataldo, Manuale di diritto industriale, Milan, 2012, page 283).

According to a second theory, to which the decision in comment adheres, only a sufficiently intense, stable and continuous use of the trademark on products or services offered for sale on the market can prevent revocation. This use shall be not symbolic: consumers shall be aware of the sign so that it is capable of distinguishing the products or services from the competitors’ (see Supreme Court case no. 16664 decision of 1 October 2012, Court of Naples decision of 2 February and Court of Milan 20 September 2002).

By upholding this second theory the Court of Bologna non only affirmed that the use made by the plaintiff was too limited for the small amount of sailing clothes and accessories produced by the club, but also claimed that said use was not genuine. This because the garments and accessories on which the trademark was fixed were promotional gadgets intended to be distributed for free to club members and in occasion of sailing events. In other words, they were not for sale. Thus, the “IL MORO” figurative trademark was, according to the Court of Bologna, not used to distinguish the sailing club’s products from the ones offered by other companies on the relevant market.

Even if the ‘requirement of availability’ would support the result of the decision, due to the limited use made of the trademark on the market, it is also true that trademark law does not require that only companies with a profitable business (and the consequent capability of demonstrating wide sales made on the Italian market) are entitled to register a trademark.

In particular, the provision requires the existence of a use and not that such use has generated incomes to the right owner. The EU Court of First Instance seems to have confirmed this point, having assessed – with respect to EU trademarks, but the provision is equivalent – that “the purpose of the provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks” (Case T-191/07 Anheuser‑Busch v OHIM, Inc. see also case T‑169/06, Charlott v OHIM and case T‑203/02 Sunrider v OHIM).

It thus seems that the evaluation of the existence of a use should be carried on taking into account also the type of business of the right-owner, on the basis of a case-to-case analysis. Otherwise, the trademarks registered by non-profit organizations would be seriously compromised.

Court of Bologna, case No. 9754/2013, 9 September 2015, Europa Yacht Club, Moro S.r.l. and Giovanni Benito Ballestrazzi v. Punta della Maestra S.r.l., Overseas Property LLC, ASD Il Moro di Venezia Yacht Club and Rama S.n.c..

MISLEADING FOOD (WINE) INDICATIONS STIGMATIZED BY THE ITALIAN COMPETITION AUTHORITY

In a recent decision (full text in Italian here), the Italian Competition Authority (“AGCM”), which is competent also for misleading advertising under the Italian Consumer Code, sanctioned the famous Italian high-quality food retailer Eataly, the wine distributor Fontanafredda, and the association Vino Libero for having marketed a series of wine bottles bearing the sign Vino Libero (“Free Wine”).

Vino Libero is an association promoted by Eataly which counts a series of wine producers, with an alleged “ethic” project of sustainable agriculture and oenology. Actually Vino Libero wines are not sulphites-free, however the maximum dosage thereof is lower by at least 40% than the limit set by EU Regulation 606/2009 (in fact, sulphites limits set by Vino Libero disciplinary are quite similar – a little lower – to those of the organic wine set out by EU Regulation 203/2012).

During a preliminary phase the AGCM considered the expression Vino Libero misleading and invited the parties to adopt an additional claim that must follow each mark Vino Libero: “free from synthetic fertilizers, free from herbicides and free from at least 40% of sulphites than the limit set by law. After having found that Eataly and Fontanafredda failed to fully respect the commitments on the additional claim, the AGCM issued a final decision and fined them.

Indeed, the AGCM held that the expression Vino Libero on a wine bottle, without further specifications, can effectively lead consumers to believe the wines bearing that mark are totally absent chemical fertilizers, herbicides and – above all – sulphites. Thus misleading them about the initiative Vino Libero and the actual presence of sulphites. In this regard, the AGCM excluded that the mere mandatory indication on the label about positive presence of sulphites (required by EU Regulation 1169/2011) is able to reduce the deceptive effect of the sign Vino Libero.

The AGCM’s reasoning is well grounded and stands against marketing initiatives playing with organic evocations. However, the optimal solution to put an end to the debate on sulphites would consist in imposing on wine producers stricter obligations to list ingredients and dosage on the labels.

Francesco Banterle

Italian Competition Authority (“AGCM”), decision No. 25980 of 13 April 2016, bulletin n. 15 of 9 may 2016