The Court of Milan (Specialised IP Division) recently upheld a motion for a preliminary urgent injunction requested by Banco di Desio e della Brianza against Federcontribuenti who was responsible, according to Banco, for publishing an article online that was gravely offensive to not only the image and reputation of the company, but also its trademark, which was reproduced in the article itself. According to the claimant, the piece tendentiously related some criminal judiciary affairs of former Banco’s employees to Banco itself, painting a portrait of the company as being habitually committed to criminal activities.
Supporting the claimant’s requests, the Court accorded protection to the image and the reputation of the company, as well as to the trademark as an autonomous and distinct asset, which can be broadly protected beyond the classical hypothesis of brand awareness protection.
Regarding the first issue, the Judge recognised the evident prejudice caused by the article to the image and reputation of the claimant and he rejected, in this case, any idea that the offence could be justified by the right to information and critique (freedom of the press) protected by the Italian Constitution. The article doesn’t respect two of the conditions identified in case law on the matter of the balance between the freedom of the press and other constitutional rights: the objective (or putative) truthof the reported news, and continence, which consists of avoiding the use of offensive and tendentious expressions. According to what has been established in Italian case law, the Court also added another condition, namely the public interest in the news (we discuss the balance between the freedom of the press and individual rights hereand here).
Regarding the second issue, the Judge pointed out that the addition of Banco’s logo inside the article published by Federcontribuenti caused damage to the specific function of the trademark, which is to appeal and promote the image of the company, observing how the trademark can be protected notwithstanding specific damage to its traditional feature of brand awareness. In this way, trademarks can also be protected from attacks from non-competitors, as happened in the examined case.
With respect to the balance between the freedom of the press and trademark protection, according to the case law cited by the Judge, the rights included in the freedom of the press protected by the Constitution cannot be extended – when exercised pursuant to the criteria of the truth and continence of the news – lest they destroy the economic value of the trademark. This applies even more to the article examined in this case, which doesn’t respect the aforementioned criteria.
In summary, in the examined case, the Judge recognised and accorded protection against two kinds of offences: one that damaged the image and reputation of the claimant, caused by the offensiveness of the article, and one damaging the appealing and promoting feature of the trademark, which had been debased by linking the company’s logo to the offensive content of the article.