The District Court of Milan, with its decision dated March 12, 2015, dismissed the preliminary proceeding filed by Audennars Piguet Holding S.A. (herein after "Audermars Piguet"), the famous Swiss luxury watches company, which tried to enforce its international trademark n. 594072, depicted below, that represents an octagon with eight flat screws of its watch "Royal Oak".
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Audermars Piguet brought a preliminary proceeding against the Italian company D One claiming that the trade by the latter of watches identical inproportions, design of the case, and especially in the octagonal crown with eight screws, registered as a trademark, amounted to trademark infringement and unfair competition. Audermars Piguet demands included a preliminary injwtction assisted by astreinte, the seizure and the publication of the order.
The District Court of Milan, with a preliminary decree issued ex parte on February 16, 2015, granted the preliminary injunction asked by Audemars Piguet.
At the hearing, the defendant rebutted the plaintiff's arguing the nullity of the Royal Oak crown trademark, whose registration was denied as a Community trademark (CTM) due to the lack of distinctiveness and also denying every breach under unfair competition laws.
The District Court of Milan - leveraging the refusal of registration ofthe Royal Oak crown trademark as a CTM as well as a national trademark inthe UK., Spain and Greece - considered that there were many elements of doubt about the validity of Audemars Piguet's trademark due to the lack of distinctiveness. In the opinion of the District Court of Milan, in fact, the disputed sign can be considered as (i) a simple geometric design. unable to convey to the consumer a message able to identify a product (ii) an assembly part of a watch, that is an element of design of the watch and not a sign of indication of the origin, (iii) a fairly common element in watches. The doubts on the lack of distinctiveness of the trademark also brought to exclude violation under unfair competition.
Due to the above, the District Court of Milan, while reserving the statement on the validity of the trademark to the subsequent merits of the case, revoked the ex parte injunction and dismissed the preliminary claims of Audemars Piguet.