By first instance decision no. 5844/16 of 10 May, the Milan IP Court granted protection to the figurative trademark representing the famous “Arbre Magique”, owned by Julius Samann Ltd (“JSL”). The latter was considered to be infringed by the “Forest Fresh” trademark held by the competitor Siscar Spólka z o.o. Spólka Komandytowa (“Siscar”), which was used for identical products.
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In the decision under review, the Judges first pointed out that Siscar had not contested the plaintiff’s allegation that the JSL brand would be highly distinctive and have a reputation in Italy. Consequently, the validity of and infringement by the Siscar trademark were evaluated on the basis of the laws that protect reputed trademarks, which do not require that the similarity between the trademarks generate confusion amongst the public, but only that:
- the trademarks are similar;
- the use of the later trademark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trademark.
As to the first requirement, the Judges ascertained the similarity between the trademarks in light of the following considerations:
- visually: in both cases a stylised tree is represented, the word element is inserted in white in the centre and is oblique (ascending from left to right), and the fragrance – also corresponding based on the colour – is written on the trunk;
- conceptually: the trademarks are identical, as in both cases they are stylised trees;
- aurally: being figurative trademarks, their oral transmission can occur only through their description, which is identical: “deodorant tree”.
As a result of the foregoing, the Judges concluded that “the two trademarks are likely to be perceived by the observer – in their overall impression – as similar, especially due to the fact that this ‘impression’ is based on the memory (of a reputed trademark as the JSL one, which is therefore firmly ingrained in the mind of the consumer), hence the consumer certainly takes into account more similarities than differences. Moreover, it is a generally accepted principle in law that trademarks with a high distinctive character – which the JSL ones undoubtedly are – must be granted stronger protection than ‘weak’ trademarks, hence variations which, although being relevant and original, leave the substantial identity of individualising elements, are unlawful“.
Given the notoriety and the spread on the Italian market of the JSL trademark, the Judges then considered that in this case the second aforementioned requirement also subsisted, “i.e. the undue advantage (with potential detriment for the plaintiff) that Siscar can achieve from the marketing of goods covered by a very similar trademark, given the easy association and the total conceptual overlap between the products that consumers will be inclined to make in their purchasing choices, being they completely identical products, which make use of the same distribution channels and respond to coincident consumer needs“.
In light of the foregoing, the defendant’s trademark was declared to be null and to infringe the JSL trademark.
The Court further noted that the same conclusion can also be reached even without applying the special protection provided to reputed trademarks: the coexistence between the trademarks at issue on the relevant market “is likely to create a serious risk of confusion, at least by association, amongst the public, which is further worsened by the fact that these are everyday and low cost consumer goods, hence the public will not pay special attention at the time of purchase. Moreover, the identity of the products compensates – to the effects of the likelihood of confusion – the differences existing among the signs that distinguish them“.
In addition, the Judges found that the marketing of Siscar products amounted to unfair competition for appropriation of qualities (as it was clear that the defendant’s products arose in the wake of the plaintiff’s) and professional misconduct (provided that the defendant was clearly aware of infringing others’ rights).
As a result of the foregoing, Siscar was ordered to cease marketing the products concerned (with a penalty for each subsequent violation) and to withdraw the products from the market.
The judgment then moved on to the assessment of the damages suffered by JSL, which were only assessed based on the latter’s lost profit, as the plaintiff had failed to timely request that the defendant be also ordered to pay other damages (e.g. for trademark dilution). Thus, having calculated the profits made by Siscar through its sales in Italy, and having found that the production costs of the products in question were fairly low, the Judges granted JSL 70% of those profits.
Siscar was then ordered to pay that amount, in addition to the payment of legal fees and to the publication of the order, at its own expense, at double the normal font size, in the newspaper “Il Corriere della Sera” and in the magazine “Largo Consumo”.