Legislatures and courts in the European Union are paying more attention to the exploitation of the goodwill enjoyed by famous and well-known trademarks by third parties, particularly given the increase in attempts to free ride on this. This is of particular concern in Italy, which is home to some of the world’s most prestigious fashion and design brands.

Statutory framework

The EU and Italian legal frameworks on famous and well-known trademarks are closely aligned with that of the international legal community on this sensitive subject – mainly, but not only under the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which operates under the auspices of the Word Trade Organisation.

Pursuant to Article 6bis of the Paris Convention, which states that a trademark can be well known in a territory for certain goods even if it is unregistered, an application to register a similar mark for similar goods should be rejected if there is proof of likelihood of confusion. Moreover, according to Article 16(3) of TRIPs, Article 6bis also applies to non-similar goods or services where:

  • use of the subsequent trademark indicates a connection to the owner of the well-known mark; and
  • the interests of the owner of the well-known mark are likely to be damaged.

By the same token, Article 5(2) of the EU Trademark Directive (89/104/EEC) sets out extra protection for trademarks from dilution as a result of unauthorised third-party use or an attempt to obtain registration for trademarks that are “identical with, or similar to, the trademark in relation to goods or services which are not similar to those for which the trademark is registered, where the latter has reputation in the Member State and where use of such a sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute” of an EU trademark.

Articles 12(1)(e) and (f) of the Italian Industrial Property Code state that a trademark lacks novelty if it is similar to a mark that is already well known within the meaning of Article 6bis of the Paris Convention – even for dissimilar goods or services – provided that use of the subsequent trademark, without due cause, would take unfair advantage of or be detrimental to the distinctive character or fame of the earlier mark.

More precisely, Article 20(1)(c) of the code provides that the owner of a registered well-known trademark has the right to prohibit third parties from using, in the course of trade and without its consent a sign that is identical or similar to its well-known mark, even where this designates dissimilar goods or services, if the subsequent designation draws an unfair advantage from the earlier mark’s distinctive character or reputation or is prejudicial to this.

Case law

The first case in which the European Court of Justice (ECJ) – and thereafter many Italian courts – dealt with this subject was General Motors Corp v Yplon (Case C-375/97). General Motors defined a concept of reputation that is so widely accepted that it is still applied 20 years later: “The Court observes that the first condition for the wider protection provided for in Article 5(2) of the Directive is expressed by the words ‘er renommeret’ in the I – 5444 GENERAL MOTORS V YPLON Danish version of that provision; ‘bekannt ist’ in the German version; ‘χα?ρει φ?μης’ in the Greek version; ‘goce de renombre’ in the Spanish version; ‘jouit d’une renommée’ in the French version; ‘gode di notorietà’ in the Italian version; ‘bekend is’ in the Dutch version; ‘goze de prestigio’ in the Portuguese version; ‘laajalti tunnettu’ in the Finnish version; ‘är känt’ in the Swedish version; and by the words ‘has a reputation’ in the English version” (Case C-375/97, paragraph 20).

In Davidoff v Gofkid (Case C-292/00), the ECJ added more comprehensive arguments relating to broader protection for marks covering dissimilar goods or services:

It should be recalled that, unlike Article 5(1) of the Directive, Article 5(2) does not require Member States to provide in their national law for the protection to which it refers. It merely permits them to provide such protection. When that power has been used, marks with a reputation thus benefit from the protection under both Article 5(1) of the Directive and Article 5(2). Article 5(2) of the Directive allows stronger protection to be given to marks with a reputation than that conferred under Article 5(1). Protection is stronger for the goods and services to which it applies in that the proprietor may prevent the use of a sign which is identical with or similar to his mark for goods and services which are not similar to those in respect of which the mark is registered, that is, in situations where there is no protection under Article 5(1), since that provision applies only where goods or services are identical or similar. (Case C-292/00, Paragraph 18-20.)

Those two decisions represent the beginning of a more structured approach at both an EU and a national level, including by the Italian courts.

For example, You-Q BV v Office for Harmonisation in the Internal Market – Apple Corps Ltd (Case C-294/12) stated: “It must also be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which they were registered and that, in such a case, the relevant section of the public as regards the goods or services for which the later mark is registered may make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards the goods or services for which the earlier mark was registered” (paragraph 68).

The Italian courts are still applying these notions so that issued decisions either are an exact match for the above-mentioned ECJ decisions or else quote from them in the arguments.

In Theofanis Papadas v Gianni Versace SpA (Decision 2471/2016, February 25 2016), the Court of Milan focused on the VERSACE element of the mark at issue: “pursuant to art 20 (1)(c) of the Italian Code of Industrial Property, use of the designation ‘VERSACE 1969 abbigliamento sportivo’ would allow [Theofanis Papadas] to enjoy an undue advantage through the well-known designations of [Versace SpA] and, at the same time, it would cause prejudice to the latter’s distinctive character as well as the ability to address a message that would be relevant to the public’s judgment… exploiting its potential suggestiveness.”

Italian jurisprudence provides extensive interpretations of the ECJ’s decisions. In particular, it is stated that: “The Community (and national) laws are aimed at protecting the exclusive rights upon a trademark which is considered a tool to communicate and attract the public and are also aimed at avoiding misappropriation when the infringer would enjoy an undue advantage at detriment of the holder… [In addition,] there are different degrees of notoriety starting from signs known to the general public to signs only known to small segments of the relevant consumer. [As a result,] there is a different extent of protection beyond the actual protection… Each different level of notoriety has an impact on the burden on proof.”

The same concept was also confirmed by the Court of Rome in Dolce & Gabbana Srl v Pelletterie Di Gregorio Srl (Case 55745/11, December 1 2015), where the judge found that: “In case of well-known trademarks – including also the famous trademarks like Dolce & Gabbana… – the statutory law allows a protection which is much broader than the simple identity/similarity of the goods and services. [The different standards of confusing similarity applied to well-known trademarks] also apply to all circumstances when the misappropriation by third parties could – instead – determine an undue advantage to the infringer and prejudice to the holder of the trademark infringed.”

Conclusion

In accordance with the statutory law and the decisions highlighted, it is clear that Italian case law is aligned with the decisions of the European and other national EU courts when it comes to protecting famous and well-known trademarks.

Vincenzo Melilli

Senior associate

melilli@bugnion.it

Vincenzo Melilli, a European trademark and design attorney, graduated from the Catholic Law School of Milan and obtained his LLM from Fordham University School of Law in New York. Before joining Bugnion SpA, Mr Melilli worked at a New York IP law firm, where he specialised in trademark prosecution, infringement, counterfeiting and dilution. A member of the American Bar Association (ABA), the ABA Design Committee and the International Trademark Association’s EU Intellectual Property Office Sub-committee, he focuses on trademark and design matters. He also lectures on trademark and design law, as well as comparative IP strategies, at universities.

Alessandro Mannini

Associate

mannini@bugnion.it

Alessandro Mannini is the manager of Bugnion’s Florence office. He is a registered Italian and Community trademark and design attorney. Mr Mannini has worked in the field of intellectual property for 26 years, mostly counselling on trademark issues. He has lectured on IP issues on behalf of the European Patent Academy and Bocconi University.

This article was first published in World Trademark Review. For more information please visit www.WorldTrademarkReview.com