By order of 26 April, the IP Court of Turin dismissed the motion for preliminary injunction and seizure filed by Geox S.p.A. for trademark infringement against Imac S.p.A., the manufacturer of the “Primigi” branded children’s shoes.
Geox alleged that its registered figurative trademark shown below to the left was infringed by the Imac trademark below to the right, and therefore asked that the defendant be enjoined from further commercialising shoes with that trademark with the establishment of a penalty, and ordered to withdraw the same shoes from the market, with seizure of those shoes and of the related accounting records, plus publication of the order.
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Imac primarily argued the invalidity of the Geox trademark due to lack of distinctiveness, which was allegedly confirmed by the fact that the petitioner never used it alone but always in conjunction with its word trademark “Geox”. Secondly, Imac claimed the absence of interference between its sign and that enforced by Geox, having regard to the diversity of form, thickness and orientation of the lines. In addition, according to the defendant, its trademark in dispute was a simple restyling of its registered trademark shown below, hence Imac was simply using its trademark in question which Geox was aware of, and which had therefore in any case been validated for five-year tolerance by Geox under art. 28 Italian IP Code.
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In the order under review, the Judge partially rejected the defences raised by Imac, noting that:
- the defences aimed at pleading the invalidity of the Geox trademark were “not relevant”, since that sign was also registered as a Community trademark which, according to the relevant Regulation, shall be considered valid in the absence of a revocation or invalidity counterclaim, which of course had not been formulated in the proceedings at issue (being it a preliminary proceeding);
- the trademark used by the defendant could not be considered a simple restyling of their earlier registered trademark, there not being a harmless change but “a conceptual change in the sign that – initially curve-shaped (like a saddle) – was transformed into a completely different sign not only for the effect of ‘vacuum’ within the ‘full’ space, exalted by the colours, but also for the end opening and for the totally different line of the curvatures”.
However, the Judge granted Imac’s defence on the diversity between the sign in dispute and the Geox registered trademark, agreeing with the importance of the different features mentioned by the defendant: the shape, thickness and orientation of the lines show “major differences, which are relevant and likely to be well noticed by the consumer which, therefore, cannot be confused”. In stating this, the Judge also took into account that these are high-end products which consumers choose after careful and thoughtful consideration of all the details, especially as regards the children’s shoes.
In light of the foregoing, the Judge rejected Geox’s motion condemning the latter to pay the costs incurred by the defendant.
It has however to be noted that this is just a preliminary decision which might be overturned in preliminary appeal proceedings or in merits proceedings.