The Italian Supreme Court recognizes the Burberry Check as a famous trademark.

Laura Bussoli - Senior Counsel

With the recent judgement no. 576/2020, the Supreme Court has accepted the reasons of the English fashion house Burberry in the case for counterfeiting its - now we can say it - "famous" brand with an ornamental motif.

In the contested decision, the judges of the Court of Appeal of Rome had followed a "bizarre" argumentative procedure in order to exclude the appeal of the crime of infringement of the above mentioned trademark: and in fact, if on the one hand the appeal judge had established - unlike the judge of first instance - that it was not necessary for the purpose of infringing the penal rules on counterfeiting, that the words Burberry and the relative word mark were affixed on the Scottish motive, on the other hand he had denied the appeal of the crime of counterfeiting due to the unsuitability of the above mentioned figurative mark to create a univocal link with the English fashion house.

With this last judgment, the Supreme Court confirmed the decision of the Rome Court of Appeal in the part of the ruling that excludes the need to use the words "Burberry" on the fabric for counterfeiting purposes, considering that "trademark infringement also occurs in cases of partial reproduction of the trademark where it is likely to create confusion with the earlier registered trademark".

However, the Court then observed, in order to overturn the appeal decision, that this is particularly true in cases where the earlier mark is a well-known mark - i.e. when it is "known to a large part of the public and can be immediately recognized as relating to the goods and services for which the mark is used".

Therefore, there do not seem to be any doubts about the recognition of Burberry's reputation as an ornamental motif brand and its ability to distinguish and originate from the products on which it is affixed.

Despite the fact that the case therefore refers to a criminal offence (counterfeiting offence under Article 473 of the Penal Code) which protects public faith and does not concern the actual confusion of the public, this decision represents an important precedent for Burberry, as it openly recognizes the well-known character of the trademark and thus broadens its sphere of protection.

THE TRADEMARK CASE OF "THE PIZZERIA DA MICHELE"

Recently, the specialized IP section of the Court of Naples dealt with the case of the heirs of Michele Condurro, founder of the Pizzeria “Da Michele” and who claimed rights on the homonymous brand.

 Michele Condurro founded the pizzeria that carries his name located in the popular Forcella neighborhood in Naples back in 1870 and over the years his pizza has become so famous that it was also mentioned by Julia Roberts in the movie Eat, Pray love.

 Recently, the heirs of Michele Condurro have been discussing the right to use the "Da Michele" brand that has become the object of contention by a branch of the family that claimed the right to use it for the opening of several branches in Italy and all 'abroad.

 Similar cases have occurred with the pizza maker Gino Sorbillo and is also happening with the brand SaldeRiso, which sees the award-winning confectioner Salvatore de Riso in court against his brother.

 The case started back in 2016 after the registration of the trademark and Internet domains, in for the recognition and exclusive use of the name "Da Michele".

 Finally, the Court ruled that the exclusive right to use the name throughout the country and internationally belongs to the Condurro heirs who manage the original Pizzeria Da Michele based in Forcella and has imposed the removal of signs, domains and trademarks. The ruling has finally recognized that the patronymic has specific individualizing function, which has been strengthened over time by maintaining a high quality standard, giving rise to a famous trademark and the rights to use the brand must be granted to the person who first adopted and used it.

Blue Ivy

A curious legal battle is recently going on between two international music stars and an Californian company for filing of the trademark "Blue Ivy", which happens to be also the name of the Beyonce’s and Jay-z’s five-year-old daughter. The two singers had already tried, at the time of the baby's birth, to register her name as a trademark, but the LA based clothing company had entered an opposition, asserting its rights to the same name, which had been operating for three years before the child was even born. Today, Beyoncé and Jay-z have filed a new request for registration, adding to brand also the rapper's last name, Carter. This time, the brand, available for viewing on the US Patent and Trademark Office database, covers a wealth of product categories from the beauty market to childcare products, as well as DVDs, CDs, handbags, books and even gambling cards or " live music performances ". The registration request was originally filed in January 2016, but was only available for opposition on January 10 this year. In fact, the California based company has again moved to block this second application, claiming that the two famous parents would like to proceed with trademark registration only to prevent someone else from using the name of their child, without being able to provide the actual proof of use on the market. Indeed, contrary to what is provided in the Italian legal system, according to the United States trademark law, an essential requirement for registration of a trademark is the presentation, at the time of application, of a so-called "statement of use", demonstrating the use of the mark on the US market. If the applicant company is new on the US market, the trademark application is temporarily accepted. Within six months, the registration may be confirmed following the commercial “use test” in the United States. The test of use is made possible by the proof of the product’s sale, or with the printing of catalogs, with advertisements, etc. In Italy, however, the use of the trademark is not an essential requirement for its registration, but a condition for maintaining its validity. The legislator, in Article 24 of the IP Code, explicitly regulated the case of the trademark revocation for "non-use" if the holder of a trademark registered in a specific class didn’t use it for 5 years. In both cases, the ratio of this rule is to prevent anyone from make use of a distinctive sign without actually using it, withdrawing it from the market and preventing others from using it.

The Panther goes to Court.

By order n. 46868 filed in the Court on 13 November 2014, the Second Criminal Chamber of the Italian Supreme Court decided, to remit the examination of United Penal Sections on the following question: "if the introduction on the market of serial morphological toys, not bearing any brand, constituents the unlawful reproduction of articles protected by trademark is an offense according to Articles 473 and 474, or in art. 517

of the criminal code".

The case arose from the introduction into Italian territory of a batch of 21,822 puppets depicting a counterfeited

MGM "Pink Panther".

On the merits, the Territorial Court observed that the puppets seized strongly resemble the character "Pink Panther", which are a specific registered trademark and, therefore, as such, subject to trademark protection.

The Court is expected to rule in the next two months.

Is Rubik's Cube a Trademark?

According to the judgment of 25 November 2014 (Case T-450/09) of the Court of Justice of the European Union, "the registration of the shape of the Rubik's Cube as a EU trademark is valid. The graphical representation of the cube does not involve a technical solution that prevents it to be protected as a trademark. "

The ruling solves a dispute arose as a result a registration request in front of the the application filed  in 1996, by Seven Towns a British company that manages the intellectual property rights related to the "Rubik's Cube" - for the registration as a Community trade mark of the three-dimensional shape of the cube to "puzzle in three dimensions.

In 1999 Seven Towns registered the famous cubes as a European trade mark. In 2006 Simba Toy, a German company that manufactures toys, filed for declaration of invalidity of the trademark.

According to the Court, the thick black lines that are part of that structure and appearing on the representations of the cube drawing a grid within them do not make any reference to a rotation capacity of the individual elements of the cube and, therefore, are not a technical function.

Indeed, the ability of rotation of the vertical and horizontal bands of the Rubik's cube is not derived from or black lines nor the grid structure, but by an internal mechanism of the cube that is invisible on its graphical representations. Consequently, the registration of the shape of the Rubik's Cube as a EU trademark can not be denied on the ground that it incorporates a technical function.

The Court also notes that the mark in question does not entitle the owner to prevent third parties to market all kinds of puzzles in three dimensions with a capacity of rotation, since the monopoly of commercialization of the owner is limited to the puzzle three dimensions having the shape of a cube whose faces are posted grid structure.

Finally, the Court considers that the cubic structure grid stand considerably from the representations of other puzzles in three dimensions on the market. This structure is therefore equipped with a distinctive character that enables consumers to identify the producer of the goods for which the mark is registered.

The ruling can now be appealed before the Court of Justice within two months of its service.

Guess What?

The Court of appeal of Milan rendered a new decision in the dispute between Gucci and Guess on the alleged imitation of some of Gucci’s iconic design elements in its products, such as the large block letter “G” and red and green stripes.

In their defense, Guess slammed down the allegations and refuted by saying that the patterns and designs are in fact common in the world of fashion and it’s not particular to Gucci.

In a ruling rendered on September 15, 2014, no. 3308, the Court of Appeal of Milan has partially upheld the appeal filed by Guccio Gucci S.p.A. against the American brand GUESS reforming in part the judgment of first instance no. 6095 of 2013, which decided on the request by Gucci to declare the counterfeiting of numerous national brands and Community ownership of the actress, as well as unfair competition pursuant to art. 2598, n. 1 and 2 and 3, cod. civ., also in terms of parasitic competition especially with respect to the

This ruling seems to put an end to a battle which began in 2009 in front of the New York Federal Court.