Cesare Galli September 19 2022 Venice Court rules out lawfulness of forum shopping in trademark infringement cases IP Law Galli | Intellectual Property - Italy Cesare Galli Intellectual Property IntroductionFactsDecisionIntroductionBy an order dated 26 July 2022, the Court of Venice (Specialised Company and Intellectual Property Division) has rejected an attempt at forum shopping made by an entity which, after its application for a preliminary injunction for alleged trademark infringement was rejected twice by the Court of Bologna (in whose district the defendant company was based), had started an action on the merits with the same subject matter before the Court of Venice. The plaintiff claimed that certain facts presented as unlawful would have also taken place or produced their effects within the constituency of that court.FactsInsurance company Alleanza Assicurazioni, owner of the corresponding trademark for insurance services, claimed that its trademark had been infringed by Coop Alleanza 3.0 – part of Italian retail giant Coop, so named because it was born from the alliance ("alleanza" in Italian), and then the merger, of three companies of the group. Coop Alleanza 3.0 allegedly used "the word 'Alleanza' for insurance, financial and related services provided to its members in dedicated physical spaces at Coop Alleanza stores and also through the Internet".(1) The plaintiff assumed that this activity also took place in supermarkets located in the Veneto region and that the acts allegedly carried out through the Internet also targeted consumers living in that region.The Court of Bologna had held that the mere presence of the word "alliance" in the corporate name and trademark of Coop Alleanza 3.0 was lawful, as it was used descriptively in its generic meaning as "an obvious reference to the origins of the company from the alliance put in place . . . between the three Coop companies, as emphasised by the presence of the expression '3.0'".(2) The Court further held that it should be excluded that "the public may be mistakenly led to assume that there are group and/or economic relations between Alleanza Assicurazioni and Coop",(3) as it was implausible that such a word, inserted in a sign in which the famous Coop brand has "an absolutely dominant character",(4) would lead consumers to establish a link with the defendant's brands – especially as:Coop Alleanza 3.0 operates in the large-scale retail sector, and not in the insurance services sector; andthe activity that Alleanza Assicurazioni claimed to be illicit:does not have as its object the promotion of products or services bearing a trademark identical or similar to that of Alleanza Assicurazioni, but, on the contrary, [aims to] promote insurance products bearing a different trademark (Unipol) than that in the ownership of the complaining party (Alleanza).(5)Decision The Court of Venice, in addressing the issue of territorial competence, first recalled the general principles enunciated by the Italian Supreme Court of Cassation on the issue of forum shopping.(6) It noted that, while it is true that "competence must be assessed on the basis of the plaintiff's prospectus and must be decided based on the state of the acts", this does not mean, however, that the judge is bound by the plaintiff's arguments; in any case, these must be verified on the basis of the initial acts of the plaintiff and defendant (summons and response brief) and the documents produced with these acts. As a result, it is necessary to:declare incompetent the judge who deems himself as such in the light of the findings derived from the allegations and productions made only in the preliminary acts of the lawsuit, or if such competence, even though alleged in the prospectus, is based on deductions that are completely specious and unfounded in the light of the documents filed. Applying these principles to the issue of trademark infringement, the Court held as follows:It cannot be considered sufficient, in order to establish the territorial jurisdiction of the Court of Venice, to allege the presence in the Veneto region of stores bearing the trademark ALLEANZA 3.0; it would be necessary to envisage, in a not entirely specious way, that not only the ordinary activity of selling consumer goods, but also the offer or advertisement of insurance products, are carried out in these premises. However, the Court noted that:from the documentation filed by the plaintiff, no useful element emerged to (make the court) believe that, at the Coop stores located in the Veneto region, the ALLEANZA sign is used in relation to insurance products or services. As to the content allegedly present on the defendant's websites, the order did not even go into the merits of these allegations (as the Court of Bologna had done): the Court ruled out in a preliminary manner that the mere fact that the websites at issue were also accessible to persons located in the Veneto region was not sufficient to confer jurisdiction on the Court of Venice. In particular, the Court ruled that:offences committed by means of the Internet require taking into account the inherently ubiquitous nature of that medium, which does not have any limitation in the physical sense, since the content uploaded online is potentially visible by anyone with access to the network. This implied that:in order to avert the risk of making the determination of the competent judge completely uncertain and to discourage the phenomenon of diffuse or ambulatory jurisdiction and consequent forum shopping, the case law of both the local courts and the Supreme Court has repeatedly ruled that, as the court of the place where the tort occurred (locus commissi delicti) within the meaning of Article 120, Paragraph 6 of the Code of Industrial Property, the court of the place where the contents were uploaded online is competent.(7)As an alternative, the locus commissi delicti could also be identified in the place where the assets of the owner of the allegedly infringed IP right were negatively affected, in accordance with the principles set forth by the Supreme Court of Cassation, Joint Divisions.(8) According to these principles, in the case of the violation of personality rights committed by means of the Internet and other mass media, the forum commissi delicti must be identified with "the court with jurisdiction over the place of domicile (or of the seat) of the legal person or, if different, the court with jurisdiction over the residence of the injured party" – which in the case at hand was not, in any event, the Court of Venice.As a result, the Court of Venice dismissed the claims, indicating that the Court of Bologna was competent, and ordered the plaintiff to reimburse the legal costs of the defendant.For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email ([email protected]). The IP Law Galli website can be accessed at www.iplawgalli.it.This article first appeared in WTR Daily, part of World Trademark Review, in September 2022. For further information, please go to www.worldtrademarkreview.com.Endnotes(1) Writ of summons, page 13.(2) Court of Bologna, order of 4 January 2018, page 8.(3) Id, page 3.(4) Id, page 9.(5) Court of Bologna, order of 2 May 2018, page 4.(6) See, in particular, the judgment of the Court of Cassation No. 20553 of 30 July 2019, cited in the order, and the judgment of the Court of Cassation No. 17794 of 22 July 2013.(7) See, in matters of international jurisdiction, Supreme Court of Cassation, Joint Divisions, No. 20700, 10 September 2013, and in matters of domestic competence, Supreme Court of Cassation, No. 5254, 1 March 2017.(8) No. 21661, 13 October 2009.