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

Are Concept stores eligible for copyright protection?

With a decision issued on 13 October 2015 (full text in Italian here), the Court of Milan stated that concept stores are eligible for copyright protection, even if they consist of a simple and straightforward design.

magi

The decision is the last of a long court-battle fought between two companies active in the cosmetics field.

Here the relevant facts. Kiko S.r.l., one of the protagonists in the Italian market of cosmetics, contacted an architectural firm asking them to project the interiors of their new stores, to be innovative and strongly distinctive. When the project was completed, approximately 300 stores were opened in Italy with a minimalist design, featuring essential symmetries and clear lines.

Afterwards, Wjcon S.r.l., one of Kiko’s competitors, opened a number of new stores in Italy that, according to Kiko, recalled the concept, design and colours characterizing the project of its stores.

Various decisions followed, with different reasoning and that, in essence, declined any type of copyright protection to the concept of Kiko’s stores. In 2010, by a decision as of 3 May 2010 (full text in Italian here), the Court of Milan rejected Kiko’s copyright and design infringement claims, resulting from the copying of all the essential features of its retail stores arguing that Kiko and Wjcon’s stores were similar only for details that were common and not distinctive in the field of cosmetics’ stores.

A similar ruling was issued a couple of years later by the Court of Rome (decision of 5 September 2012, full text in Italian here), that rejected Kiko’s copyright infringement claim, arguing that concepts stores do not fall under the scope of protection of copyright law, unless they have artistic value. The decision maintained that concept stores could not be protected under copyright law as works of architecture, but only as designs. Given that Italian Copyright Law provides that designs could enjoy copyright protection insofar as they present artistic value, the existence of a valid copyright on Kiko’s stores was excluded. As a matter of fact, the latter did not prove the existence of such a value for its stores.

With the October decision the Court of Milan followed a third approach. In short, the Court rejected the arguments according to which Kiko’s concept stores’ features were not original since they were common in the field and consisted of functional elements (and, hence, not copyrightable), and clearly affirmed that interior designs may be protected as works of architecture under copyright law as long as it is possible to identify an original act of creation.

According to the Court, originality may not be excluded even if the project consists in essential or simple features, part of the cultural heritage of the field, since the threshold for originality for concept stores is not different from the usual one, which is indeed quite low.

With particular regard to interior designs, originality must be recognized every time the project is not merely functional and the choice, coordination and organization of the singular elements of the store are arranged to obtain a new and creative final result.

In the Court’s view, Kiko’s shops were undeniably characterized by creative elements and their overall concept was peculiar and original. Even if such elements were already known in the field, originality may be inferred from the fact that no competitor had ever arranged before the features of Kiko’s shops in such a way. The fact that Wjcon copied the overall impression of Kiko’s concept stores, with merely minor differences, is not relevant in excluding copyright infringement considering that almost all the original solutions of the project where copied.

A distinct solution – in-between the approach requesting artistic value and the one satisfied with a low originality – had previously been adopted by a third group of decisions, granting copyright protection to interior design only when the architectural elements composing it were inextricably bound to the real estate and, nevertheless, original (see Court of Milan decision of 31 May 2006, Court of Milan decision of 10 July 2006 and Court Catania decision of 17 June 2000).

The complexity of the protection of concept stores under copyright law is demonstrated by the number of different theories proposed by the various decisions and is further confirmed by the provisional decree issued by the Court of Appeal of Milan as of 26 January 2016, where the October decision of the Court of Milan has been appealed by Wycon. The Court of Appeal decided to suspend the enforceability of the Court ’s decision, recognizing that the protection of concept stores under copyright law is a complex issue.

A last note: recently, also EUIPO Board of Appeal had the chance to examine Kiko’s shop and, with a decision dated 29 March 2016 (proceeding no. R 1135/2015-1), declared it not eligible for protection also under trademark law. We’ll see what’s next.

Maria Luigia Franceschelli

Court of Milan 13 October 2015, RG n. 80647/2013, Kiko S.r.l. vs Wjcon S.r.l.

The Kit Kat case: the famous chocolate bar doesn’t deserve to be protected as a trademark

On 20 January 2016 the England and Wales High Court (Chancery Division) issued its final decision on the Kit Kat case (the text is available here) dismissing the appeal filed by Société des Produits Nestlé SA (Nestlé) against the decision by which the Trademark Office rejected the trademark application for registration of the famous four stripes chocolate bar.

Preliminarily, it must be emphasized that the trademark application rejected by the Office concerned the three-dimensional sign corresponding to the shape of Nestlé’s four-finger KIT KAT product without the KIT KAT logo normally embossed onto each of the fingers of the product. This circumstance was decisive for both the decision of the English Court and that of the EU Court of Justice to which the former had applied for a preliminary ruling.

  kitkat

The dispute started in 2011 when Cadbury UK Ltd (Cadbury) filed a notice of opposition against Nestlé’s trademark application for infringement of

  • Article 3.1 lett. b) and lett. e), sub i) and ii) of Directive 2008/95/EU, according to which a trademark which is devoid of any distinctive character or which consists exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result shall not be registered or, if registered, shall be liable to be declared invalid, and
  • Article 3.3 of Directive 2008/95/EU, which provides that the registration shall not be refused or the trademark shall not be declared invalid if following the use which has been made of the trademark, it has acquired (before or after the date of application for registration or after the date of registration) a distinctive character (the so called “secondary meaning“).

In 2014 the England and Wales High Court (Chancery Division) addressed the CJEU for a clarification, in order to determine the appeals filed both by Nestlé and Cadbury against the Trade Marks Registry of the United Kingdom Intellectual Property Office’s decision issued in 2013. In its  decision, the Office had held that the Nestlé’s trademark was devoid of inherent distinctive character and had not acquired a distinctive character in relation to all goods covered by the application except for “cakes” and “pastries” and that the trademark consisted exclusively of the shape which was necessary to obtain a technical result.

 The CJEU’s decision

The Court of Justice’s decision was delivered on 16 September 2015 (available here) and has undergone many critics probably because it has determined the rejection by the English Court of the registration of the famous chocolate bar.

The decision, on one hand, is convincing where it states that the proof of the use of a shape trademark can be given also through the proof of the use as part of another trademark or in conjunction with such a mark (Nestlé’s trademark application for registration concerned, as said,  the shape of the bar without the KIT KAT logo). On the other hand, by affirming that the occurrence of  “secondary meaning” can be ascertained only by proving that the relevant class of persons (that is the “average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect”, and not also the trader) perceive the goods or services designated exclusively by the trademark applied for, as opposed to any other mark which might also be present, as originating from a particular company, the Court has given a very restrictive interpretation of the function of the trademark, since it seemingly excludes that the association of the shape with the trademark owned by the company is enough to assess the acquisition of the distinctive character.

The Court was requested of a preliminary ruling also about the obstacles under Article 3.1 lett. e) of Directive 2008/95/EU. On this point, it confirmed its previous case law according to which the grounds for refusal of registration set out by the provision operate independently of one another and it is sufficient that one of them is fully applicable to the shape at issue for precluding registration as a trademark of a sign consisting exclusively of the shape of goods (even in a case such the KIT KAT one), where that shape contains three essential features, one of which results from the nature of the goods themselves (the basic rectangular slab shape of the Nestlé’s chocolate bar) and two are necessary to obtain a technical result (the presence of the grooves running along the length of the bar, which, together with the width of the bar, determine the number of ‘fingers’).

 The English Court’s decision

However, in its final decision the English Court not only ignored the issue concerning the necessity to obtain a technical result but didn’t consider the case law, also recalled by the Court of Justice, according to which a sign which is refused registration under Article 3.1 lett. e) of Directive 2008/95/EU can never acquire a distinctive character (that is a “secondary meaning”) for the purposes of Article 3.3 (see C-299/99 Philips case, point 57 and 75; C-53/01 Linde case, point 44, C-371/06 Benetton case point 23-28 and C-48/09 Lego case point 47). Thus, the Court dismissed the appeal exclusively on the basis of the lack of proof of the consumer’s perception of the goods as originating from Nestlé.

Both decisions evidence, once again, how difficult is to validly register shape trademarks – especially shape trademarks concerning amorphous products like those in the food industry (however, the Court of Justice confirmed that the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the shape of the product itself are not different from those applicable to all other categories of trademarks).

                                                                                                             Sara Caselli

England and Wales High Court (Chancery Division), 20 January 2016, Société Des Produits Nestlé SA v. Cadbury Uk Ltd

CJUE confirms that Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes: the degree of attention of the average consumers in purchasing “sport shoes” (second episode)

On 17 February 2016 the Court of Justice of the European Union (Case C-396/15, full text here), confirmed a decision of the General Court (commented on this blog) upholding Adidas’ opposition against Shoe Branding’s Community trademark (“CTM”) application for two stripes positioned on a shoe.

Adidas

The General Court found that “the difference in length of the stripes arising from their difference in inclination are minor differences between the marks at issue that will not be noticed by the consumer with an average degree of attention and will not influence the overall impression those marks produce on account of the presence of wide sloping stripes on the outside of the shoe”.

The CJUE’s order confirmed the General Court’s finding that the trademark applied for was similar to Adidas’ 3-stripes mark on footwear, and that there was both a likelihood of confusion and dilution under Articles 8(1)(b) and 8(5) of the CTM Regulation.

The Court states that since the General Court held that the differences between two and three stripes and in the length of the stripes were not sufficient to affect the similarities arising from the configuration of the signs at issue, it did conduct the overall assessment requested by the law and, therefore, did not err in law.

Unfortunately, the Court dismissed the ground of appeal relating to the General Court’s observation that the degree of attention of the average consumer of sports clothing is low, as the appellant did not indicate which paragraphs of the judgement under appeal it disagreed with or in any other manner substantiate its argument.

As noted in our previous comment, while the Board of Appeal stated that the average consumer is accustomed to seeing geometric designs on shoes and pays attention to the details of “sport shoes”, the General Court judged that since “sport shoes” are everyday consumer goods, the relevant public is made of the average consumer with an average degree of attention.

We were wondering how to reconcile what the General Court stated in his decision with the principles stated in decisions which have admitted that, with respect to famous trademarks, the public knows almost every detail and, therefore, can more easily recognize ad distinguish imitations, so that the risk of confusion between the signs is more difficult to occur (see Claude Ruiz-Picasso and Others, T-185/02, 22 June 2004, confirmed by C-361/04, 12 January 2006).

Even if the case demonstrates that position marks and other non-traditional trademarks can be very effective tools for famous brand owners to use against those who copy their trade dress in the EU, we reiterate our doubts regarding the degree of attention of the average consumer when purchasing “sport shoes” or, better perhaps, “sneaker” (normally bought by boys or girls very detail-oriented).

Finally, it must be noted that according to this case-law the extent of the exclusive right granted to Adidas by a position mark is very strong. Too much ?

Order of the Court of 17 February 2016 in Case C-396/15, Shoe Branding Europe BVBA v. Adidas AG

Gianluca De Cristofaro

The Coca-Cola contour bottle without fluting cannot be a valid three-dimensional trademark according to the EU General Court

On 29 December 2011 The Coca-Cola Company filed an application at OHIM for registration of a Community trademark of the following three-dimensional sign consisting of the shape of a bottle (on the left), a variation of the popular Coca-Cola contour bottle with fluting (on the right):
bottle 1.pngbottle 2.jpg

On January 2013 the examiner dismissed the application having found that the mark applied for was devoid of distinctive character (under Article 7 (a)(b) of regulation No 207/2009) and had not acquired said character through use (under Article 7(3)). The applicant filed a notice of appeal with OHIM against the examiner’s decision, which was however dismissed by the OHIM Board of Appeal.

Against the decision of the Board of Appeal The Coca-Cola Company brought action before the EU General Court, which on 24 February 2016 (in case T-411/14, full text here) entirely dismissed the appeal and, as a consequence, confirmed the previous ruling of OHIM Board Appeal.

With two pleas Coca-Cola claimed: (a) that the mark it applied for has a distinctive character, being a natural evolution of the shape of the bottle “contour” with fluting which is popular and distinctive worldwide; and (b) that in any event mark it applied for has acquired distinctive character throughout the use in the market in combination with the contour bottle with fluting.

 Taking into account the first plea, the General Court recalled that the distinctive character must be assessed by reference to (i) the goods or services in respect of which registration has been applied for, and (ii) the perception of them by the relevant public.

More specifically, it emphasized, when those criteria are applied account must be taken of the perception of the average consumer  in relation to a three-dimensional mark consisting of the appearance of the goods themselves: in this respect average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any word or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark.

Then, the Court examined the mark applied for, founding that either the lower, the middle and the top section of the bottle (i) do not enable the average consumer to infer the commercial origin of the goods concerned and (ii) do not display any particular features which stand out from what is available on the market.

Therefore, considering the mark applied for as a whole, the Court held that it is devoid of distinctive character for being a mere variant of the shape and packaging of the goods concerned, which will not enable the average consumer to distinguish the goods of Coca-Cola from those of other undertakings.

In considering the second plea, the Court underlined that for the mark to have acquired distinctiveness through use, Coca-Cola has the burden to demonstrate that at least a significant proportion of the relevant public throughout the European Union, by virtue of that mark, identifies the goods or services concerned as originating from Coca-Cola.

In evaluating that, the Court examined all the items of evidence already provided by Coca-Cola to the OHIM Board of Appeal, founding that none of them, considered both in isolation and as a whole, was sufficient to establish that the mark applied for has acquired distinctive through use.

In particular, the surveys submitted by the applicant covered only a part of the European Union (only 10 of 27 Member States) and the other secondary evidences such as investments, sales figures, advertising and articles did not, due to their imprecisions and inconsistencies, compensate for that deficiency: For example, the sales figures proved that Coca-Cola has sold large beverages throughout the EU, but the data provided referred to the ‘contour bottle’ without specifying whether that means the mark applied for or the contour bottle with fluting, consequently it does not enable a conclusion to be drawn regarding the relevant public’s perception of the three-dimensional sign applied for.

Furthermore, the Court pointed out that in general a three dimensional mark may acquire distinctive character through use, even if it is used in conjunction with a word mark or a figurative mark, when the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking (as stated in case C-353/03, Nestlè SA v. Mars UK Ltd). However, in the case in point the Court noted that the mark which Coca-Cola applied for was not clearly distinguishable from the mark it was alleged to be a part of, due to the fact that it was not obvious from the evidence provided by the applicant and particularly from the advertising material, whether the bottle that is shown in them is a representation of the contour bottle with fluting, or a representation of the mark applied for.

In view of the above, the General Court found that the mark Coca-Cola applied for has not even acquired distinctive character.

We can only agree with the whole outcome: to grant a trade mark in these circumstances would have given a perpetual monopoly to Coca-Cola in the shape of a bottle that is very commonplace on the market. The General Court set forth its arguments in a commendable way without being affected by the global popularity of Coca-Cola and its famous iconic bottle contour with fluting.

It remains to be seen whether, within two months of notification of the decision, Coca-Cola appeal the decision of the General Court to the Court of Justice of the European Union.

It may be not a coincidence and neither a déjà vu, but in the 1986 the House of Lord (Coca-Cola Co.’s Application [1986] 2 All ER 274) denied the Coca-Cola Company trademark protection for shape and design of the Coke bottle, assuming that it was “another attempt to expand on the boundaries of intellectual property and to convert a protective law into a source of monopoly”.

Matteo Aiosa

General Court of EU (Eight Chamber), The Coca-Cola Company v. Office for Harmonisation in the Internal Market, 24 February 2016, case T-411/14

CJEU on liability for trademark infringement in online advertising

Daimler, a motor vehicle manufacturer and owner of the well-known trademark “Mercedes-Benz” brought an action before Budapest Municipal Court against Együd Garage, a former authorized dealer, seeking, first, a declaration that Együd Garage infringed the trademark Mercedes-Benz by the online advertisements and, secondly, an order to Együd Garage to remove the advertisements at issue, refrain from further infringements and publish a corrigendum in the national and regional press.

In fact, after the termination of the contract that entitled Együd Garage to use the trademark Mercedes-Benz for describing itself as ‘felhatalmazott Mercedes Benz szerviz’ (‘authorised Mercedes-Benz dealer’) in its own advertisements, Daimler discovered on Internet a number of advertisements still naming Együd Garage as an authorised Mercedes-Benz dealer.

Együd Garage’s defence was that, apart from the advertisement that appeared on one website, it did not place any other advertisements on the internet and that those at issue appeared or still appear contrary to its intention, without it having any influence on their content, publication or removal.

Furthermore, the former dealer wrote to the operators of several other websites requesting the removal of online advertisements which had been published without its consent.

In those circumstances, the Budapest Municipal Court decided to refer to the Court of Justice of the European Union for a preliminary ruling.

‘Must Article 5(1)(b) of [Directive 89/104] be interpreted as meaning that the trade mark proprietor is entitled to prevent a third party named in an advertisement on the internet, even though the advertisement was not placed on the internet by the person featuring in it or on his behalf, or it is possible to access that advertisement on the internet despite the fact that the person named in it took all reasonable steps to have it removed, but did not succeed in doing so.

On 3 March 2016 the Court of Justice of the European Union (Case C-179/15, full text here), stated that the publication on a website of an advertisement referring to a trade mark constitutes a use of that trademark by an advertiser who has ordered it. However, the appearance of the trademark on the site in question no longer constitutes a “use by the advertiser” where he has expressly requested the operator of the site, from whom he had ordered the advertisement, to remove it and the operator has disregarded that request. It is apparently the first time that the CJEU focuses on the assessment of the tort on subjective behaviour.

The ruling addresses the notion of “trademark use” in online advertising.

According to the CJUE “using” a trade mark in the meaning of Article 5(1) of the Directive 2008/95/EC “involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will”.

Accordingly, where that online advertising provider fails to comply with the advertiser’s request to remove the advertisement at issue or the reference to the mark contained therein, the publication of that reference on the referencing website can no longer be regarded as a use of the mark by the advertiser. Thus, the latter cannot be held liable for the acts and omissions of operators of other websites who, without his consent, have put the advertisement on their own site.

However, the CJEU states that the proprietor of the trademark may, first, claim reimbursement from the advertiser for any financial benefit that he may obtain from advertisements still online and, secondly, bring proceedings against operators of websites that infringe the rights connected with its trade mark.

Gianluca De Cristofaro

CJEU C-179/15, Daimler AG v. Együd Garage Gépjárműjavító és Értékesítő Kft.

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.

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