Patronymic Trademarks - The Supreme Court establishes the criteria for the lawfulness of use

With a decision rendered last July , the Supreme Court put an end to a dispute that took place in courts in 2011 and related to the use of the distinctive sign "Salini", which opposed two branches of the Salini family, both active in the construction sector, which for two generations shared the same entrepreneurial history.

The question brought to the attention of the Supreme Court concerned the legitimacy of the use by both parties of the common patronymic in the same economic activity (the construction of buildings), after the foundation by one of the two cousins of his own independent construction company, Salini Locatelli S.p.A., in direct competition with Salini Costruzioni S.p.A., until then the family company.

In its appeal to the Supreme Court, the appellant argued that the rule governing limitations on the use of trademarks (Article 21 of the Italian Intellectual Property Code) - which does not allow the proprietor of a trademark to prohibit third parties from using his name and address in their economic activity - should also apply to all distinctive signs, i.e. all those elements that identify a certain business activity to the public, including the company name.

The Supreme Court ruled that - although it is in principle admittable to include the founder's patronymic in the company name - it is in any event necessary to verify in concrete that the adoption of the patronymic is not likely to cause confusion.

Under Italian company law there is companies have to indicate the surname or the initials of the entrepreneur in the company name (Article 2563 of the Civil Code); in this regard the Court of Cassation pointed out that it is necessary to adopt a stricter judgement on the conformity of the use of the patronymic with the principles of professional correctness, taking into account both the likelihood of confusion between the two signs and the danger of association between them. A judgement of this kind cannot disregard a concrete verification of the competitive relationship between the two companies concerned.

In the present case, the two companies shared the same identifying "heart" of the sign, consisting of the word "Salini", and both were active in the same construction field; in this context, the inclusion of the element "Locatelli" was not sufficient to protect the company founded subsequently from a likelihood of confusion or association with the pre-existing company.

Referring to its well-established case law on this point (see, e.g., Italian Supreme Court, judgment no. 21403 of 14 August 2019), the Supreme Court stressed that, in the conflict between two companies using the same identifying sign, the one that is first enrolled in the register of companies with that sign must prevail. This point brought to the rejection of Salini Locatelli S.p.A.'s appeal, since the Court asceirtained the existence of a concrete likelihood of confusion and association between the two competing companies.

The judges of legitimacy emphasised the pro-competitive value of the rules limiting the exclusive right (potentially perpetual) of the owner on his distinctive signs (trademark and company name, respectively), reaffirming that the right to prohibit third parties from using a similar or confusable signs is severely limited in the event that the third party uses a similar or confusable sign in his economic activity, which, however, consists of his own name and surname.

The Italian law is clear in stating that this limitation must not result in undue exploitation of the reputation of another person's distinctive sign: only those uses of another person's sign which conform to the principles of professional fairness have to be tolerated by the trademark owner. The reference to a usage in conformity with these principles means that, if someone uses another person's distinctive sign - even if it is part of his own name and surname - in such a way as to unduly enhance his own product and in such a way that it constitutes an appropriation of the merits of others, such use must be considered unlawful as not in line with professional fairness.

Therefore, the competitor's personal name can lawfully appear on the goods and be used within the entrepreneur's distinctive signs, but on condition that any parasitic connections is excluded: the use of the patronymic reproducing an earlier distinctive sign is allowed only for the purpose of identifying the entrepreneur and therefore in a descriptive and informative way. Such descriptive use must, however, be excluded where there is a risk of confusion on the market, in light of the function concretely performed by the name in the commercial activity, aming to avoid the public being misled as to the identification of the producer and the origin of the goods.

Supreme Court, sec. I, decision of July 6, 2020, n. 13921

Can an anonymous work be protected as a trademark?

Gianpaolo Todisco

According to a recent decision of the EUIPO (Intellectual Property Office of the European Union) it would seem not to be the case: the rejection by the Office of the request for trademark cancellation made by the Full Color Black (manufacturer of greeting cards).

This all started when, in 2014, Banksy decided to register his famous work "The Flower Thrower" as a trademark with the European Union; it is a mural made in Jerusalem in 2005 and still wants to remember how wars and battles should be fought with the flower of hope and abandon violence. In accordance with his line of action characterized by irony, provocation and marketing strategies, the famous British writer has registered the work as a trademark to protect any products distinguished by the famous work.

Howeverthe British greeting card company Full Colour Black, sued by Banksy for counterfeiting, claimed that the trademark should be cancelled because it never intended to use it on any products. This was the argument used by Full Color Black's attorney to exonerate her from the 2018 copyright infringement charge. Well, with the decision of 14 September 2020 the EUIPO rejected the artist's request because, according to the Community Trademark Regulation, in order to claim its right on those images it is necessary to leave the anonymity.

To renounce anonymity, however, would damage the aura of mystery that surrounds him. Banksy has the opportunity to appeal within two months of the ruling, but the legal discipline on the matter makes it clear that the Writer risks losing the protectability of all other works if he chooses not to disclose himself.

PEAR TRADEMARK IS NOT CONFUSING WITH APPLE

The EU Court recently ruled on the visual and conceptual similarity between brands and, reversing the decision of the EUIPO on this point, found that the well-known Apple brand and the Pear brand cannot be confused with each other.

The story takes its cue from the opposition presented by Apple to the application for registration of the European figurative mark 'Pear', filed by Pear Technologies Ltd. Following the acceptance of the opposition, the latter lodged an appeal before the EUIPO, which confirmed but the first decision. Consequently, Pear Technologies challenged the provision before the EU Court which denied the existence of a similarity between the two signs, comparing them both visually and conceptually.

At first the EUIPO Board of Appeal recognized a remote degree of similarity between the two signs, as both represented rounded shapes of a fruit with the related stem / leaf in an identical position but the Court then came to a different conclusion.

The judge in fact observed that the two signs are visually very different from each other: in fact, they represent two distinct fruits and the one (the Apple brand) constitutes a solid form, while the other (Pear) is a set of separate objects between them; moreover, the element in the upper right corner represents in one case a leaf (Apple) and in the other a stem (Pear); finally, the word element of the Pear brand cannot be underestimated, as it has significant dimensions with respect to the shape, a different color, a particular font and is in capital letters. In conclusion, the judge ruled that the reputation of the earlier sign does not matter in a similarity judgment, and that the marks in question are visually different.

From a conceptual point of view, the Court overturned the conclusions of the Board of Appeal EUIPO, emphasizing that there is conceptual similarity only when two signs evoke images having a similar or identical semantic content.

In the present case, the EUIPO had at first considered that the two marks represented two distinct fruits but that however they were similar for biological characteristics but the court held that the signs in question evoke the idea of ​​a certain fruit, while they recall the general concept of "fruit" only indirectly.

Secondly, he reiterated that, in many states, members of apples and pears are used in proverbs as examples of different things and not comparable, and the possible similarity in size, color or consistency (characteristics that, moreover, share with many others fruits) is however an element that can be perceived by the public only in the context of a very detailed analysis, without considering that it is unlikely to assume that the consumer is aware of their origin from the same family of plants.

Based on these considerations, therefore, the EU Court annulled the decision of the EUIPO Board of Appeal, recognizing the possible influence exercised by the reputation of the earlier trademark.

UNKNOWN BANSKY IS A REGISTERED TRADEMARK.

The Court of Milan has recently expressed itself on the protection of the works of the street art artist known as Banksy, whose identity is, as many will perhaps know, unknown.

 The case was commenced by Pest Control Office Ltd which is the company that protects the artist's rights. Pest Control Office is also the owner of certain trademarks ("Banksy") but also of the distinctive signs that represent some of his most famous works, such as the little girl with the red balloon and the flower launcher. Pest Control therefore sued 24 Ore Cultura s.r.l. complaining the infringement of its trademark rights by the Sole 24 Ore that organized the exhibition “The art of Banksy. A visual protest ".

 According to Pest Control, the title of the exhibition violated Basnky's rights on the same registered trademark. Likewise the violation would have been perpetrated through the use of images of the little girl with the red balloon and of the flower thrower in the promotional material of the exhibition.

 On one hand, the Court considered the use of the signs in question on the merchandising of the exhibition to be unlawful, as a mere commercial use for the promotion of generic consumer products without relevance to the exhibition, and therefore not considered as a legitimate descriptive use of the other people's brand.

 On the other hand, instead, the Court considered that the use of the Banksy sign and those corresponding to the aforementioned works in the promotional material of the exhibition constitutes a lawful use of the brand of others, having a merely descriptive purpose of the exhibition itself.

 The Court also rejected the defendant's defense based on the fact that the owners of the exposed Banksy works (aliases of the multiples of his street art works sold by him) had expressly granted the defendant also the right to reproduce these works.

 In fact, according to Italian copyright law, "the transfer of one or more copies of the work does not matter, unless otherwise agreed, the transmission of utilization rights, ". In this context, the Court stated that, "Case Law has already made clear for some time that even the photographic reproduction of a figurative work of art in an exhibition catalog represents a form of economic use of the pictorial work and falls within the exclusive right of reproduction reserved to the author ”.

 Notwithstanding the foregoing, the Court ruled that unauthorized reproduction of the works in the catalog also constituted unfair competition to the detriment of the defendant. This case, in fact, requires not only the unlawful conduct, but also that this can actually cause damage to the competitor who complains about the offense.

 Having therefore ascertained that the only offense attributable to the defendant is the use of the appellant's trademarks on merchandising products, the Court inhibited the further marketing of the merchandising products, with the setting of a penalty sentencing of the defendant to pay part of legal fees incurred by the Recurrent.

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.

ARBRE MAGIQUE FILES A CLAIM AGAINST BALENCIAGA.

New legal issues for Balenciaga. The fashion house owned by continues to make people argue about the choice to take inspiration from 'pop' consumer products for their creations. After the luxury versions of the Ikea bag, Balenciaga, who is headed by designer Demna Gvasalia proposed this time a pine-shaped key ring that seems inspired by the famous Arbre Magique car perfumes . The Balenciaga key ring is on sale at 195 euros in light blue, pink, green and black and is made of soft calf leather, while the car perfume costs around two euros.

Car-Freshner Corporation and Julius Sämann Ltd, owner of the Arbre Magique products, has thus decided to sue the Kiering for not asking permission to use the famous colored pine, as they did other brands by starting a cooperation.

The famous stylized tree has already been adopted by other companies producing goods different from perfume diffusers, including Anya Hindmarch, but always in agreement with the right holders.

Christian Louboutin's Red Shoe Soles are a valid Trademark.

According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".

THE COURT OF TORINO ON THE PROTECTION OF KWAY'S THREE BAND STRIPE.

The Court of Torino recently ruled in a lawsuit promoted by Basic Net, owner of the well-known brand K-Way, against Giorgio Armani due to the marketing, by the latter, of products bearing the known K-Way colored.

Basic Net is the owner of a registered color Community trade mark which reproduces the famous colored strip which characterizes the clothing items branded by K-Way.

In its decision, the Court of Turin shared the arguments of the Court of the European Union concerning the application for registration of Basic Net’s Community figurative mark consisting of strips. On this occasion, the Court of Torino confirmed the rejection of the application for registration of the sign due to lack of distinctiveness. However, the Court also verified the acquisition of a distinctive character following use (so-called "secondary meaning") in four European Union States, including Italy.

The Court of Torino therefore concluded that the famous colored stripes of a K-Way constitute "a valid mark of fact, endowed with autonomous distinctive capacity even when used in combination with the K Way brand".

The Italian Court then ruled that the products they identified are "at least very similar (in the sense that they belong to the same line of casual / casual clothing) and sold at entirely comparable prices". This implies a risk of confusion between the brand of the actress Basic Net and the colored band that appears on the Armani garment. According to the Court, the likelihood of confusion arises from the use of the colored band, the overall visual impact it generates and its positioning on the sides of the hinges, and the fact that both products bearing the strip in question are marketed at the same stores and that their cost is almost similar. Such circumstances "can in fact concretely induce the consumer to believe that between the two companies there are ongoing non-existent co-branding operations". Finally, the Court of Turin ruled out the principle of the application of the c.d. “imperative of availability” opposed by the defendant

According to this principle third parties must always differentiate themselves through distinguishing additions or other arbitrary variations, sufficient to eliminate the risk of confusion with other products.

In this case, however, the additions made by Armani (aka the famous stylized eagles and the "AJ ARMANI JEANS" brand) are not considered sufficient to differentiate the product.

According to the Court of Torino the affixing of a notorious mark on the product does not exclude the counterfeiting of the figurative mark of another; if this were not the case "we would arrive at the paradoxical consequence of allowing the owners of the former to appropriately take possession of the latter, with the only precaution to use it in association with their distinctive mark, highly established on the market and highly distinctive and recognizable". For all the above, the Court concluded by declaring that the behavior established by Giorgio Armani "Constitutes an act of trademark infringement and as well as an act of unfair competition". The Court therefore issued against Armani an injunction order from the import, export, sale, marketing and advertising of class 25 products (in particular jackets) bearing the trademark object of the case or other mark containing the sign in question extended to the territory of the European Union and an order of destruction in Italy of counterfeit products.

The Shape of Audermar's Piguet "Royal Oak" is not a 3d Trademark.

The Court of Milan has recently expressed its opinion on the protection of the shape of the well-known "Royal Oak" watch created in 1972 by the Swiss company Audermars Piguet initially protected as a three-dimensional trademark.

Audemars Piguet recorded the shape of the relative lunette as an international figurative mark and complained on a trademark counterfeiting and unfair competition case for the sale of watches marketed by the Milan based start-up “D One”.

At first, the court issued an iaudita altera parte restraining order prohibiting the future commercialization of such watches however, the court overturned its initial decision and dismissed the appeal of Audemars Piguet on the grounds that "there are numerous elements of doubt about the validity of the operated trademark", as evidenced by the fact that its registration as a Community trade mark has been denied by the competent office (EUIPO).

In particular, according to the Court, the trademark seems to lack distinctive capacity, ie the ability to "distinguish products from those of another manufacturer and, therefore, perform the function of identifying the entrepreneurial origin of the product";

Again, according to the court of Milan, the three-dimensional distinctive sign does not even seem to have acquired distinctive capacity through use (so-called "secondary meaning"), "not having been documented uniform use" of the sign itself ".

Finally, the registration of the shape in question as a trademark does not even seem compatible with the provisions of art. 9 CPI, according to which "signs constituted exclusively ... from the form that gives substantial value to the product can not be registered as a trademark".

 In terms of unfair competition, the judge recalled that, to integrate the unfair competition law, the servile imitation of the product of others must "invest characteristics that are totally inexistent with respect to the function they are intended to perform", or those "arbitrary and whimsical" and "new with respect to the already known" characteristics that give originality to the product and have distinctive capacity, so that the public is led to bring them back to the company from which the product originates: only when these characteristics are concerned, servile imitation invests "elements capable of generating confusion in the public" and thus integrates unfair competition with confusion.

In this case, the judge did not recognize the existence of such an imitation, stating essentially - on the basis of what was found at the point of counterfeiting of the mark - that the imitated forms would be "structural and non-distinctive", as well as in some cases "Now acquired to the collective taste, having undergone a certain standardization", and that in any case there would be "significant differences" between the two products.

Surprise Decision on Steve Jobs Trademark.

The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype.

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.

The Peril of Using your name as a Trademark.

About a year after Thaddeus O’Neil launched a menswear line inspired by the surf culture he grew around on Eastern Long Island, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles owner of the famous “O’Neill” sports apparel trademark.

This was the beginning of legal dispute between the surfwear brand founded in 1952, O’Neill, and the independent New York designer who is gaining more and more popularity after winning several fashion contests.

In their dispute with the New York fashion designer, O’Neill argues that the brand has been using its name since the 1950s, and that Thaddeus O’Neil’s marks are “confusingly similar”. According to O’Neill this could of course lead consumers to be deceived and think that the companies are related.

Trademark disputes involving patronymics (i.e. the trademark equivalent to the founder’s name) are quite common in fashion. In 2012, Tod’s — which was operating the Roger Vivier label under a license at the time — took Los Angeles handbag designer Clare Vivier to court for trademark infringement. She eventually settled and re-branded as Clare V. In 2016, Elio Fiorucci lost his case in Italy against the new owners of the brand he founded in the trademark case that involved the use of the “Love Therapy by Elio Fiorucci” trademark.

But what is the position of Italian Courts when use of patronymics could be confusing with other trademarks? In the end of the 80’s the Supreme Court stated that the use of a patronymic as a trademark is a legitimate use of a sign conflicting with a previous registered trademark so long that the previous trademark does not become a famous mark.

This principle has been reaffirmed by the Supreme Court in 2016 in the cited Fiorucci vs. Elio Fiorucci case.

Our tip? Carry out a preliminary trademark search before launching your brand bearing your name.

Hendrix vs Hendrix

Experience Hendrix, a subsidiary of Janie Handrix, who owns the rights to all the entire estate of the guitarist and most famous brother Jimi, sued Leon Hendrix and his partner Pitsicalis for breach of copyright and trademark. In fact, Leon and Pitsicalis would illegally used some of the many Experience’s trademarks (the signature and the images of the face and bust of Jimi) to trade marijuana cigarettes and alcoholic beverages. But the battles for the commercial use of the Jimi’s name are going back in time. In 2015, the Washington District Court had ruled on the matter, forbidding Leon and Pitsicalis to use images of the musician. In addition, in January 2017, the District Court of Georgia declared illegal the use of the words "Jimi" and "Hendrix" on their websites, social media and online platforms. The lawsuit filed in March 2017 in front of the Court of New York by the Experience Hendrix declared illegal, for infringement, also the use of the name "Purple Haze" in the sale of marijuna cigarettes and T-shirts. Purple Haze, in fact, is a song written in 1967 by Jimi Handrix. Experience Hendrix has requested injunctive relief, the elimination from the market of goods violating the trademark’s right and the relatives damages. On the other hand, Thomas Osinski, Pitsicalis and Leon Hendrix’s lawyer, said that "Experience Hendrix has long known long of my clients’ products and it brings this suit only to tarnish and interfere with the lawful and correct Leon’s businesses, which respects Jimi Hendrix’s legacy." Furthermore, Osinski, regarding the content of the claim, said that, although previous rulings have excluded Leon Hendrix and his family from Jimi’s music catalog and denied the possibility to use the trademarks created by Experience Hendrix, nothing prevents Leon and his partner to sell other merchandise Hendrix-related. Who knows how the Court will fix this new family dispute.

Cavalli vs Cavalli

The court of Catania has sentenced Roberto Cavalli to pay the costs of proceedings in the trial against Mrs. Luciana Cavalli, a craftswoman, producer of shoes in Sicily.

The famous Florentine designer, six years ago, had sued his namesake for the misuse of“Cavalli” brand.

It doesn’t matter thatthe Sicilian designer’s surname is actually Cavalli and that her brand exists even before Mr. Robert’s: in his opinion, this name is used out of turn and it represents a case of unfair competition. This is why Roberto Cavalli asked the judge to ascertain an economic damage against his company and to establish a compensation, calculated in 10,000 Euros per day of use, under Article 2600 of Italian Civil Code.

But the Court has rejected the requests made by the complainant and, as Luciana Cavalli’s lawyer says, the judge has awarded the good faith and the continuous use of the trademark “Cavalli” by the manufacturer of shoes and accessories. Thus, Mrs. Cavalli won’t withdrawn her name from the market and she will be able to continue her production of leather goods “made in Italy”.

The Sicilian judgement is at odds with what was stated by the Supreme Court about Fiorucci. In that case, the Court judged unlawful the use of the brand Love Therapy by Elio Fiorucci by Mr. Fiorucci himself, because the famous trademark had been sold to a Japanese holding. That time, it was ruled that the use of the name, even if his own name, it’s not legal if it is a patronymic mark owned by third parties. It can happen, the Court explained, that a coupling effect is generated and that this leads to confusion about the more renowned trademark.

"Made in Italy" as a collective National Trademark

Recently Italian manufacturers have been talking about the creation of a "Made in Italy" brand, which would ensure the Italian character of the production process, based national on raw materials.

The draft of a "Voluntary Conformity Certification of Italian Origin and Specialities” is ambitious and it aims to increase the attractive power of Italy’s national supply chain, as a brand system that enhances products, production and domestic supply of goods and services.

The initiative has been put forward by Conflavoro, who has entered into an agreement with the worldwide agency for certifications Lloyd's Register, which has the power to issue certifications. The protection and certification mechanism is subject to a double control: one of an Internal Supervisory Body, set up by Conflavoro and the other is a Scientific and Technical Committee for the Address and the Development of Single National Brand, compose of external  experts in the field of world business, universities and consumer associations.

In particular, the food market seems the most interested in this project. Indeed, the single brand would be affixed on food products’ packaging and would ensure not only protection against counterfeiting system, but also a response to the increasingly stringent demands of consumers in terms of quality and safety of food and beverage.

Thus, the "Made in Italy" would become a sign of authenticity and traceability of Italian products and, if possible, also a symbol of innovation that coordinates taste and genuineness.

The use of Twitter Hashtags and the CIO's trademark rights.

The United States Olympic Committee (USOC) has been trying to prevent companies that aren’t official sponsors of the Games from using “official” Twitter hashtags such as #TeamUSA and #Rio2016.

Over the last few weeks, the USOC has sent letters to companies that sponsor athletes but don’t have a commercial relationship with the USOC or the International Olympic Committee, warning them against stealing intellectual property.

One of these letters, written by USOC, states: “Commercial entities may not post about the Trials or Games on their corporate social media accounts. This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.”

The mean-spirited approach is designed to protect sponsors – such as Coca Cola, McDonald’s, GE, P&G, Visa and Samsung – who fork out for marketing presence at the event.

It’s been possible to trademark hashtags in the US since 2013 but the application of trademark law to those tweeting hashtags may be wrong.  Indeed trademark infringement occurs when another party uses a trademark and confuses the public as to the source of a product or service that’s being used in commerce. That’s not what happens when you use a hashtag because you may not be selling a product or service, but just making statements on an open forum. How else do you indicate you are talking about the Rio 2016 Olympics without saying #Rio2016?

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.

The Italian Supreme Court Rules on the "Alessi" Brand.

A few days ago, the Supreme Court ruled on the risk of confusion between a famous CTM trade mark  (Alessi) with the trademark "Exclusive Giacinto Alessi srl" which correspond to the name of the founder (Mr. Giacinto Alessi).

In the first two degrees, the courts had excluded any risk of confusion between “Alessi” and “Exclusive Giacinto Alessi” judging that the use of the latter was therefore legitimate.

The decision of the Supreme Court was however different according to the principles of limitation of the use of a surname which corresponds to a trademark.

The Supreme Court stated that "once a sign identical to the name of a person was validly registered as a trademark, the person who legitimately carries that name cannot adopt it (as a trademark) in sectors identical or similar to the previous trademark. The right to a name is, therefore, a clearly compressed in the economic and commercial sectors due to the prior registration of the name as a valid trademark.

The Court also argued that "Alessi"  is a  trademark  which has no links with the products / services offered and therefore stronger than the trademark “Exclusive Giacinto Alessi” which contains a descriptive term (the word exclusive).

What is Italian Sounding?

Protecting and developing products requires raising awareness about the historical, cultural and social heritage of our country.

Geographic origin is especially important for Italy, the European country with the most products registered as DOP and IGP.

The term Geographic Indication (GI) refers to DOP and IGP products as established by article 2 of European Community Regulation n. 510/06, OF 20 March 2006.

The matter of the fact is that the so called Italian Sounding Syndrome does not only concern food products: the phenomenon has reached enormous proportions, affecting products of all kinds, violating intellectual property and thus becoming a legally pursuable offense which is costing Italy 100's of billion.

Exactly that happened in Canada. Maple Leaf Foods registers "Prosciutto di Parma" as a trade mark,

produces some salted-dried pork and sells it under the Italian name. Next?

You guessed right: producers who make the traditional, original prosciutto di Parma can't call it by its real name in Canada because Maple Leaf Foods was more clever with the paperwork... 

What is the difference between the two you might ask?  Well...for one, Parma (the original ) only sells ham...

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.