Following a preliminary proceeding commenced by Barilla against an Italian textile company to stop the production and commercialisation of pillows reproducing the name and the shape of some of Barilla’s most famous cookies, the Milan IP Court upheld both the word trademark infringement and the parasitic competition claim, granting an injunction in the terms described below.
In support of its requests, Barilla invoked its registered word trademarks “Pan di Stelle”, “Galletti”, “Rigoli”, “Batticuori”, “Mooncake”, “Gocciole”, “Baiocchi”, “Abbracci”, “Ringo” and “Mulino Bianco Crostatina” (all used to denominate cookies on the Italian market) and the unregistered three-dimensional trademarks relating to the same products. Barilla argued that each of these trademarks had a reputation among the relevant public as to give them an extra protection, and complained that the respondent’s marketing of pillows with names and shapes identical to those of its well-known cookies constituted trademark infringement and unfair competition.
The respondent (which prior to the lawsuit had unsuccessfully tried to obtain a licence from Barilla) replied by arguing that the shapes reproduced were common in the confectionery industry, available under different trademarks; that the word trademarks had lost distinctiveness, having become in the market generic descriptions of the products they covered; and that, in any event, the trademarks enforced by the claimant did not have such a reputation to prevent the commercialisation of different goods, such as its pillows. It also noted that the claimant had tolerated the marketing of the products in suit since 2013.
As mentioned above, the Milan Court preliminarily recognised the infringement of Barilla’s word trademarks, noting that the names by which the respondent’s pillows were sold – although modified in “Pandistelloso”, “Gallettoso”, “Rigoloso”, “Batticuoroso”, etc. due to a Barilla’s warning letter – constituted “mere variations” of the claimant’s trademarks, and that their sale had taken place not just in the absence of any authorisation, but being positively aware of Barilla’s unwillingness to grant a licence. The proceeding Judge denied any loss of distinctiveness of the trademarks in suit and, on the contrary, found they had a reputation “taking into account the market share, the geographic coverage, the duration of their use and the investments made“, such as to extend their protection also against goods that are not similar to those for which they are used. The Judge then considered that there was also a case of parasitic unfair competition, as in her view there was no doubt that the respondent had “… taken unfair advantage of the trademarks’ reputation and of the parasitic exploitation of Barilla’s products, imitated in all their “arbitrary” and “capricious” shapes (…) also causing a likelihood of confusion about the origin of the resistant’s products”. According to the Judge, these findings made it unnecessary, for the purposes of a preliminary injunction, to examine the infringement of the unregistered three-dimensional trademarks.
With regard to the danger of irreparable harm required to obtain interim measures, the Judge found that the existing evidence of current marketing of the infringing goods was enough to determine the existence of such danger. The objection raised by the respondent about the alleged tolerance by Barilla to such marketing was found by the Judge to be belied by Barilla’s warning letters prior to the lawsuit and by its refusal to grant a licence. Likewise, “the initial behaviour kept by the claimant when the negotiations between the parties were in progress” was not relevant.
In light of all the above, the Court upheld in part the application and enjoined the respondent from the marketing of its goods in association with Barilla’s word trademarks or with any signs evoking the latter, fixing a penalty (€ 100) for any subsequent violation.
The order is, of course, subject to appeal and, due to its provisional nature, could be overturned by the final judgment in ordinary merits proceedings.