The Court of Milan Business Chamber “A” recently issued a decision in a case in which Chanel was sued in relation to its “Latin Lover” advertising campaign of 2010 (decision no. 11375/2014 of 29 September 2014). The plaintiff Latin Lover s.r.l., active in the “sports, youth and cheap clothing” field and owner of the homonymous registered trademark, claimed that the latter was infringed by the photographic campaign at issue, used by Chanel to advertise its own branded products.
In this judgment, the Panel finds that no violation has been committed by Chanel, in the light of the following – briefly explained – considerations:
- Chanel had marked their products with their own brand and not with the Latin Lover brand (which merely gave name to the advertising campaign).
In essence, the Court seems to implicitly say that this kind of use does not constitute the use of the trademark “in the economic activity … for goods or services“, as required by art. 20 of the Italian Intellectual Property Code (“IPC”) for there to be an infringement.
- “The wording of the plaintiff’s trademark, i.e. the term “Latin Lover”, is extremely weak, as it is widely used in the industry as evocative of elegant and “elite” clothing.”
In this regard, the Court, taking for granted the wide use of the trademark in the clothing sector, confirms the case-law according to which brands that are not particularly original, in respect to those commonly adopted in a specific sector, are weak.
- “As the parties work in very different sections of the market (sports, youth and economic clothing – elegant and expensive clothing) the likelihood of confusion or association between the products of the same is, in practice, to be excluded.”
In this regard, the Court appears to apply the rule set forth in art. 20(1)(b) IPC, according to which infringement occurs when an “identical or similar” trademark is used to mark other people’s “identical or similar” products, “if the identity or similarity between the signs and the identity or similarity between the products or services may create a risk of confusion for the public, which may also consist of a likelihood of association between the two trademarks“. However, it is not explained why this rule would apply instead of art. 20(1)(a) IPC, which prohibits the use of “a sign identical to the trademark for goods or services identical to those for which it was registered” without requiring the existence of any risk of confusion or association.