Court of Appeal of Milan, Decision of 30 March 2010

Bayer AG and its Italian subsidiary Bayer S.p.A. claimed infringement of Bayer's trademarks containing the well-known name "Aspirina" by Elaborados Dieteticos S.A. (ED), a Spanish pharmaceutical company specializing in homeopathic products, who manufactured and sold in Italy homeopathic pills under the name "Herbasprina" for which it had registered in 1998 the Italian trademark "HerbAsprina" (No 845.511) for classes 5 and 30.

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In 2005, the Court of Milan declared ED's Italian trademark "HerbAsprina" invalid and granted Bayer's claims for damages in the amount of 40,000 Euros, holding that Bayer's rights in its trademark "Aspirina" were infringed.

ED appealed to the Court of Appeal of Milan, arguing that the trademark HerbAsprina was not invalid and the marketing of its products did not amount to an infringement since Bayer's "Aspirina" trademark was widely used by Italian consumers for indicating a large range of drugs used to cure generic diseases and, therefore, had become the generic name to identify the products. Furthermore, ED claimed that the core part of its "HerbAsprina" trademark was graphically and phonetically different from Bayer's "Aspirina" trademarks.

In its decision, the Court of Appeal of Milan held that due to the early registrations of Bayer's "Aspirina" trademark - the Italian and International trademark registrations date back to 1921 - and due to Bayer's wide and continuous advertising campaigns during the last decades "Aspirina" was a very strong and extremely well-known trademark. The court maintained that even if "Aspirina" was sometimes used in the current Italian language to describe a category of medicinal remedies, Italian consumers were aware that such name "remained the sign used to distinguish only one drug marketed [by Bayer] in Italy." The court added that Bayer's continuous legal enforcement of its "Aspirina" trademarks over the years was sufficient to establish that "Aspirina" has not become the generic name of the product and, therefore, the trademark could not be revoked.

As to the claimed infringement of Bayer's trademark by ED's sign, the court said that the word "Herb" in ED's trademark was perceived by the relevant section of the public as a mere indication of the substance constituting the pills, whereas "Asprina" was the core part of the trademark and as such confusingly phonetically and conceptually similar to "Aspirina." Thus, there was a likelihood of confusion between Bayer's and ED's trademarks.

The Court of Appeal of Milan concluded that the manufacture and sale of ED's homeopathic pills under name "HerbAsprina" in Italy amounted to an infringement of Bayer's trademark rights in "Aspirina" and dismissed ED's appeal