An IP Judge of the Milan District Court partially granted an application for preliminary seizure and injunction filed by the well-known confectionery company Ferrero against one of its competitors, which claimed, among other things, an infringement of shape trademarks (Order of 08.11.2014, Docket No. 19325/2014, Judge S. Giani).

Ferrero had claimed that certain products—crispy wafers and pralines—marketed by the competitor interfered with some of the company’s trademarks relating to the appearance of its products (including, for example, the well-known Ferrero Rocherpralines). The trademarks in suit were both 3D trademarks—so-called shape trademarks in a strict sense—and figurative marks consisting of a 2D graphical representation of the relevant product. he Judge partially granted the application, marking a distinction between the different products and related trademarks, and setting an interesting precedent on the validity of trademarks related to the appearance of a product.

The legal reference is Article 9 of the Italian IP Code, which (like Article 7 of Regulation 207/2009/EC and Article 3 of Directive 2008/95/EC) bars from registration as trademarks signs that consist exclusively of “the shape that results from the nature of the goods themselves”, or “the shape of goods that is necessary to obtain a technical result”, or “the shape that gives substantial value to the goods”. There is consensus in the Italian jurisdiction that these limitations apply not only to three-dimensional trademarks, but to all trademarks, including two-dimensional ones, “intrinsically related” to the product, in other words to all marks that are not conceptually separable from the relevant product. The purpose of the provision is to prevent the establishment of a monopoly of unlimited duration on functional shapes or elements for which the lawmakers have provided time-limited monopolies, such as patents and utility models.

The application of these principles led the Judge to quite opposite conclusions as regards the different kind of products in suit. With regard to the pralines marketed by the respondent, the Judge decided (based on a “likelihood” assessment, which is typical of preliminary proceedings) that the trademarks that the applicant claimed to be infringed were likely to be found invalid in merits proceedings. The Judge noted in this regard that the applicant had actually obtained a patent, now expired, which claimed the very features (spherical shape, chocolate cover with granulated slivers, solid core filling, etc.) characterising the relevant trademarks; to grant trademark protection to those features would, therefore, result in an improper unlimited extension of the time-limited patent protection.

These conclusions applied, in the Judge’s view, to both the three-dimensional and the two-dimensional trademarks in suit concerning pralines, the latter being in fact, a mere graphical representation of the same. She also stated—in accordance with established case law—that there was no room in this case to consider a “rehabilitation” of the trademarks under the secondary meaning doctrine.

The Judge came, however, to opposite conclusions with respect to the applicant’s trademarks relating to snack wafers (again, a three-dimensional one and a figurative one consisting of a graphical representation of the product). She ruled out, for these trademarks, the application of Article 9 of the IP Code, noting that the exterior elements characterising the trademarks in suit, and openly reproduced by the respondent in its products—a given number of cream-filled bulges and certain surface decorations—were of an arbitrary nature and did not have the functional, technical or aesthetic purpose that would have prevented their registration as trademarks pursuant to Article 9. These elements could, therefore, be granted a temporally unlimited monopoly.

On the basis of the above, the judge partially upheld Ferrero’s motion, granting against the respondent a preliminary seizure and injunction subject to a penalty for each transgression or day of delay.

The author does not know whether the order has been appealed to date. There is no doubt, however, that if the applicant wants to avoid the seizure being revoked, under Italian procedural rules it shall commence ordinary proceedings on the merits to confirm the Court’s preliminary findings.