In decision no. 7640/13, published on the 5th of August, the IP Court of Milan ruled that the Community word trademark “IWEB”, owned by Apple Inc., does not infringe the earlier Italian trademarks owned by Galgano Informatica S.r.l., dismissing at the same time the counterclaim of invalidity proposed by Apple.
In 2013 Galgano Informatica, an Italian software company, filed a lawsuit against Apple claiming that the use by the Californian company and its Italian subsidiaries of the sign “IWEB”, filed as a Community Trademark in 2006 and registered on 30thJanuary 2008, infringed some of its earlier trademarks used for identical goods and services: specifically, the unregistered word trademark “iweb”, the unregistered figurative trademark consisting of the word “iweb”, plus the stylised representation of a chameleon and the pay-off “improve yourself” – both allegedly present on the market since the beginning of 2004 – and the Italian registered trademark corresponding to the unregistered figurative trademark, filed on 30th September 2004.
Apple claimed the validation of its trademark pursuant to Article 54(2) of Regulation (EC) no. 207/09, arguing that Galgano Informatica had acquiesced in the use of the later trademark for more than five years from the date of its filing; in addition, it filed a counterclaim for the invalidity of the plaintiff’s trademark, arguing that the verbal part of the latter was descriptive of the goods and services that it covered and, at the same time, that the trademark lacked novelty, as the “i” letter was previously used in a large number of Apple’s own trademarks (such as iMac, iTunes, iPod) already present on the market. On the alleged infringement, the defendant argued that there would be significant differences among the trademarks in suit, such as to exclude the likelihood of confusion among them, and that the consumer of the products covered by the plaintiff’s trademarks – as openly admitted by the latter – would be more specialised than Apple’s average customer.
The Milan Judges preliminarily dismissed the alleged validation of the “IWEB” trademark invoked by Apple. In fact, they noted, “the start day (of the five-year period)is the date of the trademark registration, not the day when it is first used, even if the trademark holder duly registered it afterwards”: in light of this, they found that the five-year period had not yet expired at the time of the service of the writ of summons by the plaintiff (and, in particular, the time of handing over of the writs of summons to the court bailiff, in accordance with a well-established case-law).
On the merits, the Milan Judges denied the enforceability of the two unregistered trademarks actioned by the plaintiff, since, for the purpose of the enforceability of an unregistered trademark “… the occasional or irregular use of the sign does not constitute sufficient evidence“ but it is also necessary to prove “a special notoriety acquired with the public as a result of the large entrenchment of the distinctive character of the sign”: according to the Court, the two trademarks lacked this qualified notoriety. Hence, the Judges turned their attention solely to the registered trademarks and to the comparison between the latter.
With reference to the likelihood of confusion, the Court noted that “in the case of a complex trademark, such as the present case, an assessment has to be made with regard to the individual parts that have an independent distinctive character, regardless of their verbal or figurative nature”; in fact, “in the presence of verbal and figurative parts, the verbal one cannot be automatically considered dominant, but there must be a factual assessment“. In the application of this principle, the Court found that the plaintiff’s complex trademark possessed a highly distinctive figurative part, but a weak verbal part, due to “the undoubtedly descriptive nature of the ‘iweb’ sign and also to the popularity in the IT sector of the initial vowel ‘i’“. In light of this, despite the phonetic identity of the two signs, the fact that Apple’s trademark only reproduced the relatively weak verbal part of the plaintiff’s trademark, and not its highly distinctive figurative part, led the Court to exclude the likelihood of confusion between the signs, also considering that the level of attention of the average consumer of technology services is “quite high” and taking into account the “different public of the products” covered by the two trademarks.
On these grounds, the Judges rejected the infringement claim as baseless.
On the other hand, they also rejected the counterclaim of invalidity proposed by Apple. The plaintiff’s complex trademark was not considered to be invalid on the grounds that, firstly, from a global point of view, the trademark is still distinctive, as only one of its components is descriptive of technology goods and services; secondly, it possesses novelty, as “the signs preceded by the letter “i” on the market at the time Galgano applied for the registration of the sign (among which, however, there was no ‘IWEB’ sign) were part not only of Apple’s, but also of other subjects’ trademark families, and they did not in themselves constitute sufficient element to create confusion about the origin of the services“.