By preliminary order of 10 May 2016, the IP court of Venice upheld the infringement of the well-known word trademark “Morellato”, owned by the petitioner Morellato S.p.A., an Italian historical jewellery and watch company, by another Italian company with the same business name, trademark and domain name – all reproducing its founders’ surname – but active, inter alia, in the field of perfumes and cosmetics manufacturing.

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The resistant had used the company name “Morellato” since 2013 and was the owner of two (Italian and European) word trademarks, respectively filed in 2004 and 2005, despite the petitioner’s Italian and European trademarks which had been registered since 1989. In addition, the resistant had registered the domain name www.morellatobeauty.it in 2014, despite the domain name www.morellato.it registered by the petitioner in 1996. Thus, the petitioner brought an action for preliminary injunction against the resistant, claiming, inter alia, the registration in bad faith of the two word trademarks, the domain name and the company name at issue by the latter as well as the infringement of its own well-known word trademark by the resistant’s distinctive signs.

The resistant defended itself, firstly, arguing that its own trademarks would be validated pursuant to Article 28 of the Italian IP Code, the petitioner having acquiesced the use of the latter for five consecutive years from the date of their filings. In addition, in the resistant’s opinion, the trademark enforced by the petitioner would not be well-known so that it would not deserve the cross-class protection granted to reputed trademarks’, and there would not have been any trademark infringement, given the total difference between the goods covered by the conflicting trademarks: in fact, the resistant’s trademarks were registered for goods (including perfumes, cosmetics and clothing) totally different from those of the petitioner’s trademark (including precious metals, jewellery and leather goods). Finally, the resistant claimed the lawful use, on one hand, of its contested trademarks, because such signs would have reproduced the surname of its founders “Morellato” and, on the other, of its own domain name, since the latter would be different enough from the petitioner’s domain name because of the additional word “beauty”.

In ruling, the Judge rejected all the resistant’s arguments.

In fact, the ruling excluded the alleged validation of trademarks claimed by the resistant, since the documentation filed by the latter was considered unsuitable, not being specifically referred to the contested trademarks but to others, nor being capable of demonstrating the use of the latter for the five consecutive years required by Article 28 of the Italian IP Code for the purpose of trademark validation.

In addition, with regard to the surname issue, the Judge pointed out that surname use in general can certainly limit the use of third parties’ identical trademarks, but only provided that the use is in accordance with the principles of professional fairness. In the case at issue, however, “it is undeniable that the Morellato sign is used by the resistant with a clear distinctive function and not to indicate the name and surname of the resistant’s founders, focusing the entire attention on the sign Morellato”. In this regard the surname use cannot be considered lawful – and, thus, opposable to the petitioner’s trademark – since it is “liable to give the impression that there is a commercial connection between the third party and the owner of the trademark“.

After having excluded any possible limitation to the protection granted by the enforced trademark, the Judge assessed the alleged infringement of the signs at issue, noting the plain identity of the latter and notwithstanding a certain difference between the products they covered. In fact, the Judge did not consider that such a difference was sufficient to exclude the likelihood of confusion between the trademarks (including the likelihood of association among them), since the goods at issue can be “attributed to the common field of fashion and luxury industry” and on this basis were considered similar. Thus, the Judge acknowledged the infringement of the enforced trademark by the resistant’s trademarks, also applying the generally accepted principle according to which “a lower degree of similarity between the goods and/or services may be offset by a higher degree of similarity between the trademarks and vice versa”. Moreover, it deemed the reputation of the petitioner’s trademark effectively proved, so that the latter could be enforced against any other similar trademark also covering different goods.

In light of the above, the Court enjoined the resistant from using in any form the Morellato trademark owned by the petitioner, also as a company and domain dame given the unitary protection conferred to all the distinctive signs pursuant to Article 22 of the Italian IP Code, and accordingly condemned the resistant to pay the legal fees.

It must however be noted that this is just a preliminary decision which might be overturned in preliminary appeal or merits proceedings.