Court of Milan, Decision of 31 March 2010

Volkswagen AG is the owner of the International word trademark "GTI" (No. 717592) which has also been extended to Italy. Bottari S.p.A., an Italian company which produces and sells car components owns the Italian trademark "GTYPE TUNING LINE."

Click here to view Bottari's Italian trademark  

In 2009, Volkswagen requested Bottari to refrain from using its trademark, claiming infringement of its trademark rights in "GTI".

Bottari initiated legal proceedings before the Court of Milan, seeking the invalidity of the Italian part of Volkswagen's International word trademark "GTI" on the grounds that "GTI" had a mere descriptive character ("GTI" originally meant "Gran Turismo Injection") and lacked distinctiveness because it was commonly used by a number of competitors in the automotive sector. Volkswagen counterclaimed the infringement of its "GTI" trademark by Bottari's trademark.

With regard to Bottari's claim for invalidity, the Court of Milan said that according to Italian trademark law letters or group of letters were eligible to be protected as trademarks as long as they did not constitute an illicit use of a sign normally used in the common language. "GTI" matched these requirements as it was not an expression used in other fields than in the automotive sectors and since it had acquired a strong secondary meaning following the success of some Volkswagen car models.

The court maintained that even if "GTI" originally meant "Gran Turismo Injection" this injection system was nowadays used for many automotive products and, therefore, not anymore perceived as a distinguishing feature of Volkswagen's cars. Consequently, according to the court, "GTI represents for the relevant section of the public something different from what it originally stood for." The informed user would usually refer "GTI" to a certain model of Volkswagen Golf rather than to a specific technical feature of a car. The court concluded that Volkswagen's "GTI" trademark was valid.

With regard to Volkswagen's counterclaim of infringement, the court held that Volkswagen's and Bottari's trademarks were not likely to be confused. Bottari's trademark was characterized by a strong graphic element, which was not the case in Volkswagen's trademark. Furthermore, "GTI" and "GTYPE TUNING LINE" were clearly phonetically different.

As a result, the Court of Milan dismissed both Bottari's and Volkswagen's claims.