On September 3 2015 the Court of Bologna (IP Specialised Division) issued a preliminary injunction prohibiting a hotel from using the business name Hotel Ink 124 and the corresponding domain name 'www.hotelink124.it', as they were held to be confusingly similar with the registered trademark INC HOTEL, belonging to large Italian hotel chain the INC Hotels Group. The court also placed an injunction on the use of links to 'www.hotelink124.it' on other websites, thus requiring the infringer to remove all references to the infringing mark from the Internet.

Facts

Notably, the infringement was established even though the infringing mark had been used before the registration of the infringed mark. The rights holder had started using the infringed mark in 2004 and had established a national reputation. In that regard, a previous Supreme Court judgment stated that the examination of the novelty of a trademark must consider the prior use that the rights holder has made of it.(1)

On the merits, the court stated that:

"[the] likelihood of confusion is clear, even for a qualified customer, due to the use of denominations such as "Hotel INC" and "HotelInk124", as based on a semantic, visual, graphic and phonetic comparison of those marks, the general impression that they convey leads to a conclusive judgment of similarity that could create a likelihood of confusion among the public that there is a connection between the companies."

The court considered the defendant's use of infringing business and domain names to be illegal under unfair competition law, stating that "the competing companies operate in the same sector and geographical area and share the same customers and therefore this practice is confusing, parasitic and anti-competitive".

The court followed European Court of Justice case law, under which a strong similarity between two products outweighs the differences between trademarks. The court stated that:

"the strong similarity between the services provided by the parties contributes without any doubt, together with the abovementioned similarity between the trademarks, to increase the likelihood of confusion for the consumer regarding the origin of said goods, considering the similarities between the activities performed and the type of clients to whom the services rendered are directed."

The court also considered confusion over sponsorship and in a wider sense to be relevant. It stated that the risk of confusion that "the services offered by the defendant by means of the trademark Hotelink124 were provided by the claimant or by affiliated undertakings" was highly probable. The court did not establish the potential confusion in abstract terms. It examined the proof that the claimant provided regarding its trademark's reputation through advertising campaigns and promotional activities at a national level together with various awards received from industry experts.

Decision

The court ordered the defendant to remove the hotel sign and withdraw all products featuring the infringing mark from the market. Further, the court set a daily fine for violation or non-compliance with the injunction and other measures in particular, for any delay in removing the business name, infringing online material and additional infringing materials that breach unfair competition legislation.

The ruling did not need to be confirmed by a proceeding on the merits to become final, even though it was granted in urgency proceedings. Article 132 of the Code of Industrial Property states that injunctive relief (including a fine or order for withdrawal from the market) granted in urgency proceedings may become final, unless one of the parties begins proceedings on the merits.

This means that the civil protection of IP rights in Italy is extremely efficient, as proceedings on the merits are required only for orders to:

  • pay compensation and surrender profits made from the infringement;
  • pay the costs of publication of the ruling in newspapers or magazines; and
  • hand over the infringing goods to the rights holder or arrange for the destruction of the goods at the expense of the infringer.

Comment

In cases in which the infringement of a trademark is stopped immediately with an injunction (which generally takes a few days or a few months at most), the rights holder need not file proceedings on the merits and the resolution of disputes is quick and cost effective.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (galli.mi@iplawgalli.it). The IP Law Galli website can be accessed at www.iplawgalli.it.

Endnotes

(1) On July 9 2005 the Supreme Court of Cassation ruled that "The novelty of the pre-used mark must be examined with reference to when this pre-use began" (Decision 14473).

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