The Business Chamber “A” of the Milan Court recently declared the partial revocation for non-use of the Italian trademark “Zefiro”, owned by Gruppo Coin S.p.A., granting the relevant claim proposed by Louis Vuitton Malletier (recent addressee of another judgment by the General Court of Europe in the matter of trademarks, which we have discussed here).
In the proceedings, the famous Parisian fashion house claimed that they had recently started to commercialise a leather luggage called “Zephyr” on the European market and that they were willing to commercialise it in Italy. For this purpose, assessing the possibility of registering the name Zephyr as an Italian trademark, Louis Vuitton had found the pre-existing similar trademark Zefiro, registered by Coin – inter alia – for goods in Class 18 of the Nice Agreement (“goods made of leather or imitations of leather not included in other classes”); the same goods for which it wanted to register its sign.
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A further inquiry by Luis Vuitton followed, in order to collect evidence that the trademark Zefiro had in fact never been used to cover leather goods: once evidence had been collected – by consulting Coin’s commercial catalogues and by multiple confirmations from the defendant’s internal organisation – that Zefiro had been used for home textiles only, the fashion house appealed to the Court for a declaration of revocation for non-use of the Coin trademark at issue for goods in Class 18.
The Court of Milan, considering that the non-use of the disputed trademark in the five years preceding the commencement of the court action had been sufficiently proved, declared the partial revocation of the trademark for the abovementioned goods from the date of commencement of the proceedings.
In particular, the Panel pointed out that “the purpose of the rule on the revocation for non-use is to prevent the taking possession of signs, due to the related likelihood of thus causing distortions of competition“. On the other hand, “all forms of use of the trademark in distinctive prospective, even in advertising or communication, is theoretically capable of avoiding this”, provided that such use is directed towards the market and therefore relevant in competitive terms.
In this context – the Judges reminded – Article 121 of the Italian IP Code requires anyone who seeks the revocation of a trademark to prove the non-use of that trademark by its holder, which circumstance can be proved by any kind of evidence. In this regard, the Judges identified some of the pieces of evidence needed to prove the non-use of a trademark, such as: “the depositions of experts, the verified absence of the trademark in the commercial catalogues of the company, in its price lists, or in its usual advertising channels concerning specific types of products“.
On this basis, the Court considered the evidences provided by the claimant to that effect to be appropriate – i.e. a detailed survey report on the exclusive use of the trademark Zefiro for goods different to those in Class 18 and an admission made in writing by the defendant on “the previous absence of any recent use of the trademark for luggage or leather goods” – deeming the non-use of the trademark at issue for goods in Class 18 sufficiently proved, and therefore declaring the partial revocation of the trademark.
It’s also important to note that Louis Vuitton requested that the partial revocation of the trademark be dated from its original registration. However, the Panel did not grant this request, because the proved non-use of the trademark was based on evidences that only dated back to five years before the beginning of the proceedings at issue.