Gianpaolo Todisco
In the field of industrial law, trademark disputes are among the most delicate and strategically significant challenges faced by companies and licensees. A recent decision by the Court of Venice (Order dated January 27, 2025), issued in the context of preliminary injunction proceedings between USPA Global Licensing Inc. and Giangi Srl, sheds light on two key issues: the licensee’s standing to sue and the criteria for assessing the likelihood of confusion between trademarks.
Licensee Standing in Trademark Litigation
The Court reaffirmed a critical principle: once the trademark owner initiates legal proceedings, the licensee loses the right to act independently and may only intervene in the ongoing case. This rule is designed to prevent the fragmentation of litigation and the proliferation of parallel lawsuits that could lead to inconsistent outcomes.
In this case, USPAGL and IN.CO.M. Spa launched preliminary injunction proceedings that paralleled those already brought by the trademark owner (USPA) before the Court of Genoa. The judge found that the plaintiffs lacked standing to litigate over the same trademarks already at issue in the primary proceedings. However, the Court recognized the licensee’s right to act against third parties not involved in the original litigation (such as Pittarello spa) and in relation to trademarks not yet enforced by the owner.
Assessing Trademark Confusion: The Court’s Analysis
The decision also provides a detailed analysis of whether there was a likelihood of confusion between USPA’s registered trademarks and those used by Giangi Srl, which also featured mounted figures in an athletic pose.
Key Legal Principles Affirmed
The Court highlighted several core principles of trademark law:
Confusion must be assessed globally and synthetically, taking into account the overall visual, phonetic, conceptual, and semantic impression of the marks.
In the case of composite trademarks, both figurative and word elements must be considered equally.
The degree of distinctiveness directly influences the scope of legal protection: the stronger the mark, the broader its enforceability.
Despite USPA’s global recognition, the Court found that the image of a polo player did not warrant exclusive protection in every possible form. Notably:
Giangi’s logos depicted riders holding flags, not mallets, and featured a British flag, signaling a different conceptual reference.
The overall appearance and impression of the trademarks were sufficiently dissimilar to rule out a risk of confusion or implied association.
As such, the Court dismissed the claim of counterfeiting and unfair competition, ordering the plaintiffs to pay legal costs.
Distinctiveness: Navigating a Fine Line
The Court also addressed the distinctiveness of the marks at issue, applying the widely accepted “capriciousness curve” doctrine. According to this theory, a trademark's strength increases as the logical connection between the sign and the product decreases.
In this case, however, the Court found that references to the sport of polo are so commonly used in the fashion and accessories industry — with examples like Ralph Lauren and La Martina — that they no longer carry the level of arbitrariness necessary to support a claim of strong distinctiveness.
Conclusion: A Precedent of Practical Importance
The USPA ruling sets a noteworthy precedent for brand owners and licensees. It clearly delineates the limits of a licensee’s autonomy in legal actions, and underscores the need for a rigorous, holistic approach in assessing trademark similarity.
Importantly, the decision confirms that a superficial resemblance or the use of common thematic elements (such as a polo player) is not sufficient to establish infringement. Legal protection hinges on the presence of substantial similarity likely to cause actual confusion among consumers.