With Judgment No. 4710/2016 of 20 September 2016, the IP Court of Catania, Italy, granted protection to the well-known KAMUT® trademark against unauthorised use by local entrepreneurs.

The trademark in question is licensed free of charge by its American rightholder and the former’s European subsidiary, leaders in the field of the production and sale of Khorasan wheat, on condition that the licensees (farmers, mills, pasta factories and so on) follow a number of quality specifications regarding the variety of wheat used, its cultivation method and its organoleptic properties, and allow the licensor to periodically verify compliance.

In the case decided by the Catania Court, a local restaurant and catering business was using the words “BIOKAMUT” and “farina di kamut” [1] in the course of trade without having been licensed by the trademark holders.

After several cease-and-desist letters had been sent to no avail – other than inducing the alleged infringer to also start using the “BIOKAMUTH” and “BIOKAMUTHI” variants of the disputed sign – the rightholders filed a trademark infringement and unfair competition lawsuit before the Catania IP Court, based on, among others, the 1992 registered Community (word) Trademark “KAMUT”.

The main argument raised by the defendant in reply was prior use of the sign at a local level. The company had been using the de facto trademark “BIOKAMUT” since 2003. The plaintiffs’ trademarks covering class 43 (which includes the provision of food services) had all been filed later than 2003, while the only earlier one was the 1992 Community Trademark, which, however, had only been registered for product classes 5, 30 and 31. [2] The defendant contended that a trademark registered only for product classes could not be invoked against a company that would use it to identify services, due to inherent lack of similarity.

The Catania Court took a different view. It observed that the word “KAMUT”, being devoid of any conceptual adherence to the product it distinguishes, or at least any conceptual adherence perceivable by the average consumer (it allegedly means “wheat” in ancient Egyptian, i.e. a dead language), is, as such, a strong sign, with a high degree of distinctiveness. The word “KAMUT” represents, therefore, the true core of the signs “BIOKAMUT” and its variants “BIOKAMUTH” and “BIOKAMUTHI”, in which, conversely, the “BIO-” suffix is merely descriptive, and as such devoid of any substantial distinctiveness. The addition in the two variants of the letter “h”, which is silent in the Italian language even when followed by a vowel, is irrelevant.

The judges considered the parties’ activities to be similar in terms of market sector and customer base. They noted that, rather than to the formal classification of the trademarks in suit, relevance should be attributed to the intrinsic nature of the products, the kind of customers targeted – in this case, individuals partial to the wholesomeness and quality of the food – and the needs satisfied. On these grounds, they found there existed the likelihood of confusion, even in the form of likelihood of association, required by the law for trademark infringement.

The Court also denied that the use of the word “KAMUT” could be justified as merely describing the products and services sold by the defendant, noting that such word is not the name of a plant variety – which is rather the Khorasan Wheat – and therefore its use, far from having an informative function, served only to benefit from the notoriety of the KAMUT® trademark.

On these premises, the Catania Court ruled that the defendant’s conduct constituted trademark infringement and passing-off, enjoined the defendant from using the signs “BIOKAMUT”, “BIOKAMUTHI”, “farina di kamut” and “farina di kamut bio” in the course of trade – setting a monetary penalty for any breach of the order or day of delay in complying with it – and ordered the transfer of the domain names “biokamuthi.it” and “biokamuth.com” to the plaintiffs. In addition, the Court ordered the publication of the ruling in two major newspapers at the defendant’s expense.