An interesting opinion was handed down by the Rome Tribunal on June 26, 2014 following to PI proceedings which were initiated by a company in order to enjoin a competitor from the continuing use in commerce of its registered trademarks (and/or signs confusingly similar to the same) as service name as well as over the internet.
In particular the Court held that the principle recognized under Italian law as the “unity of the distinctive signs”, as provided under Article 22 of the Italian Industrial Property Code, applies not only to the use of a trademark as a domain name for a web page owned by a competing undertaking, but also to the naming and identification of such undertaking’s Facebook page: such use, therefore, can also amount to a trademark infringement.
According to the Court, the Facebook page or profile which is used in commerce “in the context of an economic activity” has to be retained as an “atypical distinctive sign”, that, if capable of identifying an undertaking different from the trademark owner, serves the functions of a trademark (i.e. identification of the source of goods and services offered) and thus it is capable to create confusion among the public, as well as dilution and unfair advantage to a competitor when the imitated mark is acknowledged.
In its opinion the Court also dealt with the issue of the degree of protection which can be afforded under Italian law to those trademarks which are inherently “weak” in distinctiveness (e.g. for being highly descriptive of a company’s business or activity). With such respect the Court held that, even when a mark can be held as “weak”, the mere adding of a generic suffix to the verbal core of the mark (in the case at hand, the adding of the adjective “international”) is not sufficient to exclude infringement; according to the Court the same can be said also when the imitated mark is a complex mark and is reproduced without making use of the figurative part, all the times that such part is not the real distinctive “heart” of the mark.
Finally, two interesting notes came from the Court on two important procedural issues relating to PI proceedings in IP matters. First, the Court of Rome held that, if a dispute regarding the ownership of a mark is pending, the party which alleges to be the owner is always entitled to file a PI action and such action has not to be suspended before a judgement is rendered in the ownership action. Secondly, the Court clarified that the urgency requirement set out for PI proceedings in Italy can be met by the trademark holder also in case he has been tolerating the infringing activity for a long period of time and the action deals with an on-going and persisting infringement.