COURT OF MILAN, DECISION OF 24 JUNE 2010, NO. 11637/2010
In 2008, the Dutch company Creative Brands C.V. brought proceedings against Damiani International B.V. (Damiani), a leading company in the jewelry sector, before the Court of Milan. In particular, Creative Brands requested the court to declare the revocation for non-use of Damiani's Italian figurative trademark "DD DAMIANI," originally filed on 21 March 1983 and renewed on 13 April 2006, for clothing products in class 25.
Click here to view Damiani's trademark.
Creative Brands claimed that Damiani's trademark was not used for clothing and submitted evidence to show that Damiani used it only in connection with jewelry. Damiani, however, submitted photos and invoices relating to a few bags and foulards bearing the "DD DAMIANI" trademark and marketed in Italy between 2002 and 2008.
The Court of Milan considered Damiani's evidence sufficient to prove trademark use. In its decision, it outlined two principles to be taken into account when evaluating the relevant scope of use of a trademark in Italy.
According to the court, the use of a trademark for jewelry could also establish use of the trademark for clothing items. Clothing and jewelry were similar products as they satisfied similar needs, namely "the need to adorn oneself, to fulfill one's aesthetical sense and the need to attract others' eyes." In addition, many companies in the fashion sector expand their businesses to the jewelry sector, so that the average public was used to considering such goods as similar.
The court found that, based on the evidence provided by Damiani, the trademark could be considered a reputed trademark. It said that a partial revocation for non-use was not applicable to reputed trademarks, as such trademarks shall be granted a stronger scope of protection against infringement — also with regard to products different from those registered by the trademark owner. The court concluded "it would be non-sense to consider a partial revocation of a reputed trademark for non-use."
The decision of the Court of Milan is consistent with consolidated Italian case law not revoking reputed trademarks for non-use. This case law, however, appears to be contrary to EU legislation and to the opinion of the Court of Justice of the European Union in similar matters. Indeed, Italian courts often tend not to evaluate the actual existence of a conflict between a reputed mark and another (allegedly infringing) mark on the basis of the evidence filed by the parties.