E-commerce. Does your site comply with online sales regulations?

Gianpaolo Todisco - Partner

The exponential increase in online shopping in a world marked by the Covid-19 pandemic should convince many operators to assess the legal compliance of their e-commerce sites. This also in light of the fact that the Agicom, the Privacy Guarantor and the judicial authorities are certainly more active in times of great expansion of the Internet and it is then easy to get checks by the authorities on reports of customers or competitors that can lead to the elevation of penalties often high.

For our part, we have identified five macro areas where it might be useful to think about a "legal check-up" to avoid sanctions by the competent authorities.

1. General Terms and Conditions of Business

If the owner of an online shop intends to introduce clauses in the relationship with consumers, these must always be specified in the general terms of contact. The general terms and conditions must state the general terms and conditions of sale as well as all information regarding the right of withdrawal, the method of returning the goods, delivery times and costs of the goods and shipping, in full compliance with the provisions of the Consumer Code.

2. Privacy and Cookie Policy

The Privacy Policy is a document that informs your users about the processing of their personal data, it is mandatory by law even in case of tracking visits by means of web analytics tools.

Unfortunately, many companies still pay little attention to the obligations regarding the processing of personal data but if you do not want to incur significant fines from the Privacy Guarantor it is important that your company site is in compliance with the law.

Legislative Decrees 69/2012 and 70/2012 have established the obligation to insert a banner when opening the website, which requires the user's consent to the processing of data, in order to be able to continue with the navigation. The consent will also be required when you intend to share your customer's data with third parties.

In addition, if the site uses certain types of cookies for user profiling, it is mandatory to insert a specific information banner on the nature of the cookies used.

3. Indication of company data

The owner of an e-commerce must always provide certain data such as: name, registered office, e-mail address, registration number in the REA or in the Commercial Register. For corporations, the paid-up share capital (or liquidation status) must always be indicated.

4. VAT and business register notices

Except in the case of purely occasional activities and earnings of less than 5,000 euros, the opening of an online store involves the opening of a VAT number and registration in the Register of Companies, at the Chamber of Commerce.

5. Copyright and industrial property rights.

A website (shop windows, blogs, e-commerce, portals, etc.) consists of multiple elements that can be protected:

• the domain name;

• the logo;

• the graphic configuration;

• the structural and organized conception that emerges when you navigate through your pages: comparable to the "scenography" of the site;

• the texts and images of the pages

• It is important to check whether your site complies with copyright law and does not violate the industrial property rights of third parties.

SOS Italia App. Privacy and Big Data at the time of Covid 19.

Andrea Antognini - Of Counsel

The dramatic evolution of the health crisis linked to Covid-19 in Italy has required the Government to put in place exceptional measures to deal with this emergency, including the use of new technological tools never previously used by national institutions.

On March 20, 2020, the Ministry for Technological Innovation, together with the Ministry of Economic Development and the Ministry of University and Research, issued an invitation to all operators in the Italian digital ecosystem to help simplify the management of the pandemic through the development of digital platforms and other data processing systems.

Thus the mobile app "SOS Italia" was launched, a project developed by the Italian Digital Revolution Association, in collaboration with the software house Sielte, which is expected to be soon available on the digital stores of iOs and Android operating systems.

"SOS Italia" aims to monitor and contain the spread of Covid-19 through a user-friendly interface (log in via Google, Facebook, SMS with OTP on phone number and native integration with SPID) that will allow citizens to easily find the official communications made by the Government, the rules of conduct to be adopted, the numbers to call in case of emergency and other useful information.

Citizens will be able to fill in a questionnaire for self-diagnosis purposes and communicate to the authorities their state of compulsory or preventive isolation, the presence of symptoms and positivity to the virus.

Each user will also be able to choose to digitize their self-diagnosis for permitted travel and receive notifications if there is a risk of infection. This will be possible because, once the subject has voluntarily downloaded the app, GPS functionality will remain active even if the user is not using the app. In this way it will be possible to create a mapping of all the places frequented by the individual and build a register of the people with whom the subject has come into contact.

Similarly to what has already been experimented in South Korea, also in Italy, therefore, a technological response is attempted, based on the use of Big Data and algorithms, to put a brake on the contagion curve. But, if, on the one hand, the technical functionalities of the application provide tools of undisputed importance for the monitoring and containment of the pandemic, on the other hand, the inevitable implications in matters of data protection are worrying.

During a national and global health crisis, the protection of the primary right to health is potentially at odds with a number of other values worthy of protection. The management of the current emergency inevitably entails the restriction by the authorities of fundamental rights, including personal freedom and the protection of personal data (privacy).

Let us look at the privacy aspects. GDPR provides for the lawfulness of data processing, even for special categories, even without the express consent of the data subject, when the processing is necessary to safeguard his/her vital interests (or those of another natural person), or when it is indispensable for the performance of a task in the public interest. On the basis of this provision, therefore, the processing of the natural person's data, including data relating to his/her health, may take place independently of the granting of consent when the purpose of such processing is to limit the dissemination of Covid-19.

With regard to the processing of telecommunications data, such as location data, national laws implementing the ePrivacy Directive must also be respected. The ePrivacy Directive allows Member States to introduce legislative measures to safeguard public security.

Legislative Decree 14/2020, which contains urgent provisions for the strengthening of the National Health Service in relation to the Covid-19 emergency, provides for the possibility that the subjects operating in the National Civil Protection Service, the offices of the Ministry of Health and the Istituto Superiore di Sanità and all other subjects in charge of monitoring and ensuring the implementation of the pandemic containment measures, may share and exchange among themselves personal data of citizens (including those relating to their state of health) that are necessary for the performance of their duties. They may also omit to provide the privacy policy (as well as instructions to data processors) or provide it only orally.

This decree also makes clear that personal data processing must in any case be carried out in accordance with the principles of lawfulness, transparency and correctness provided for in Article 5 of the GDPR, reducing their processing to a minimum (principle of minimisation).

To date, however, it is not clear how these principles will be punctually implemented and who, among the various authorities at stake, will in fact be identified as the data controller and which entities, public and private, will be responsible for the aforementioned processing.

One of the issues of greatest concern is the processing of data relating to the location of citizens and how these data can be used by the authorities.

In various interviews, the Privacy Guarantor, in the person of its president, has reiterated that the right to privacy may be subject to certain limitations in the face of a collective interest, provided that the necessary balance is ensured between the protection of individual rights and the safeguarding of collective legal assets, including by providing that any law in derogation has a defined duration and coincides with the emergency period.

Moreover, an inevitably related issue concerns the data retention time, which will also have to be limited to the aforementioned emergency period and it will have to be clarified beforehand what processing operations will be allowed at the end of the emergency period and what will happen to the data collected.

The Privacy Guarantor has clarified that "data protection can even be a very useful tool in the fight against the epidemic, when this action is based on data and algorithms, of which accuracy, quality and "human" review must be guaranteed, where necessary, as in the case of wrong automated decisions based on bias". 

In this regard, continues the Privacy Guarantor, a decree-law could combine timeliness of the measure and parliamentary participation. It goes without saying that the duration must be closely linked to the continuation of the emergency.

In the joint statement of the President of Convention 108 and the Commissioner for Data Protection of the Council of Europe there is an interesting indication on the use of preliminary tests in "sandbox", namely the advice to test the app in a safe and private environment before releasing it to the public.

The Privacy Guarantor may, if necessary, be involved in prior consultation, but in any case, the logic of processing and security measures must be verified by expert consultants able to develop correct privacy architectures and set up processing operations - by design and by default - respecting our fundamental rights.

In conclusion, privacy is not an obstacle to the massive processing of data, even sensitive data, but such operations, which affect our fundamental rights, must be effective, gradual and adequate.

The Italian Antitrust dictates guidelines on the Relationship between Clients , Agencies and Infuencers.

On March 15, the Antitrust Authority concluded a misleading advertising procedure, involving for the first time 9 micro influencers who worked in the launch of the "Pan di Stelle" chocolate cream produced by Barilla.

For some time now, the Antitrust Authority has been dealing with various issues of hidden advertising published through new media, as the recent Alitalia / Alberta Ferretti case.

Also in the Pan di Stelle case, the Antitrust Authority has not imposed any sanctions against the parties involved, accepting the commitments that Barilla and the micro-influencers are willing to take on.

The Antitrust Authority has positively assessed the commitments made by the parties involved in the proceedings, which are beginning to emerge as real guidelines, both for the companies launching the marketing campaign and for the influencers promoting the products/services covered and for the agencies mediating the relationship between customers and influencers.

The guidelines that emerge from the Antitrust Authority's decision can be summarized as follows.

As for companies:

1. These should use a contractual standard in their dealings with influencers that contain penalty clauses (such as reduction of fees and/or penalties and/or suspension of payments) against influencers in case of breech;

2. Contracts between the client and the agencies should include clauses aiming at making the agencies responsible.

As for agencies, these must carefully monitor the work of the influencers and take prompt action, also at the customer's request, to ensure compliance with the Guidelines.

With regard to micro-influencers they should:

1. include, in posts containing the image or mention of products received from brands to which they have no obligation to carry out promotional activities, hashtags such as #suppliedbybrand or #brandgift or #fornitodabrand, or other similar wording;

2. include, in posts published as part of a collaborative relationship with the brand, hashtags such as #suppliedbybrand or #advertisingbrand or #advertisingbrand;

3. refrain from publishing the content authorized and selected by the commissioning brands, unless the contract expressly provides for it with the relevant constraints. This decision sets out guidelines that give greater certainty in contractual relations between companies and influencers.

Coronavirus (Covid-19) and Repercussions on Employment.

In the infamous health emergency situation due to the spread of the Coronavirus, the Italian Government adopted a series of urgent restrictive measures to contain the epidemiological spread from Covid-2019.

In particular, Decree n.6, provided that, in order to "avoid the spread of COVID-19, in municipalities or areas where at least one person is positive for whom the source of transmission is unknown ... the competent authorities are required to take all measures of containment" and "among the measures may be taken" among others, the "closure of all commercial activities", the "closure or limitation of the activity of public offices", "suspension of work for companies": in a word, the suspension of all potential work activities (except for essential or essential public services) both in red areas where "outbreaks" have been identified and in "yellow" areas, i.e., areas at risk of spread (Lombardy, Veneto, Piedmont, Liguria, Trentino-Alto Adige, Friuli and Emilia Romagna).

This paralysis has led to the need to resort to "relocated" forms of work to reduce the impact of the suspension of activities, so much so that, with the subsequent Prime Ministerial Decree of 25/2/2020, the Government established that "the agile working method governed by Articles 18 to 23 of Law no.  81, is provisionally applicable, until 15 March 2020, for employers with registered or operational headquarters in the Regions of Emilia Romagna, Friuli Venezia Giulia, Lombardy, Piedmont, Veneto and Liguria, and for workers resident or domiciled there who work outside those territories, to all employment relationships, in compliance with the principles dictated by the aforementioned provisions, even in the absence of the individual agreements provided for therein".

Outside of government regulations, the further measures to be used to contain the negative consequences deriving from the suspension of work activities could consist of recourse to the Wages Guarantee Fund (Cassa Integrazione Guadagni) or the Wages Guarantee Fund (Fondi di Integrazione Salariale), provided that the conditions are met.

Another measure that could be used could be to place employees on vacation or have them take time off, provided, of course, that such measures are agreed upon and not imposed on employees.

Without claiming to be exhaustive, the above suggestions are merely food for thought while awaiting the desired return of the health emergency situation.

Human Feelings as Drugs. The Court of Appeal of Milan overturns the decision.

Recently the Court of Appeal overturned a judgment rendered in September 2018 by the Court of Milan, which we discussed in this blog

The case was inspired by the alleged violation of copyright of a photograph entitled "Human Feelings as Drugs", consisting in the creation of photographs, prints and posters reproducing vials of medicines of various colors, bearing the words "empathy", "hope", "love", "peace" and "joy" with the expressive phrases of the related feeling or emotion. Artist Valerio Loi intended to realize the idea of taking "feelings like medicine", so as to "allow the patient an instantaneous awakening of perception and a reintegration within the vital flow of emotions".

The plaintiff complained about the illegal reproduction by defendant, Queriot de la Bougainville of a series of pendants - combined with necklaces and bracelets - that would have reproduced their own vials, with identical names of feelings, accompanied by the same illustrative sentences. He therefore invoked injunctive relief, damages and publication of the judgment. The Court of First Instance had reiterated that with regard to photographic works, the artistic character presupposes the existence of a creative act as the expression of an intellectual activity which takes precedence over mere material technique.

That is to say, the photographer's method of reproduction must convey a message which is additional and different from the crystallized objective representation, that is to say, it must be a subjective interpretation capable of distinguishing a work from similar works having the same subject matter.

According to case Law, the requirement of creativity of the photographic work exists whenever the author has not limited himself to a reproduction of reality, but has inserted in the shot his fantasy, his taste, his sensitivity, so as to transmit his emotions. As far as photographic works are concerned, the artistic nature of the reproduction cannot be deduced from the notoriety of the subject or object that is portrayed, since the value of the artistic work is appreciated by virtue of formal canons - which express the author's personality in an absolutely characteristic and individualizing way - since the relative judgement must be made regardless of the object or subject itself reproduced.

The Court of first instance had excluded the artistic nature of the litigious images, since it was impossible to recognize precisely those aspects of originality and creativity that are indispensable to recognize the full protection under Italian Copyright Law. According to the Court, the plaintiff did not indicate precise shots or a careful selection of lights or particular dosages of light and dark tones that the Court could appreciate. Nor did the photograph highlight a personal and peculiar imprint of the photographer.

In overturning the decision, the Court of Appeal of Milan, held that: "the presence of the creative or non-creative character in the photographic work must be verified, assessing unitarily the subject, reproduced in the photograph, and the photographic modalities with which the subject was rendered, given that the emotional suggestion of the photographic work derives precisely from the close connection existing between the subject photographed, obviously three-dimensional, and the particular modalities with which the same is rendered in the two-dimensional photographic image. On the other hand, the creativity, suitable to give the photographic work artistic value, on the one hand, does not coincide with the concept of creation, originality and absolute novelty, but refers to the personal and individual expression of an objectivity, belonging to the categories listed in the Italian copyright Law, so that the existence of a creative act, even a minimal one, is sufficient, on the other hand, is not constituted by the idea itself, but by the form of its expression, that is to say by the way in which the idea is concretized in the external world [...]" and that therefore "There is no doubt that the photographic work in question presents a relevant rate of creativity [...]".

In conclusion, the Court decided that Valerio Loi's work 'Human Feelings as Drugs' should be considered to be protected by copyright law as a creative photographic work.

How Blockchain can help the Protection of Unregistered Trademarks.

As many may know, blockchain shares the task of recording transactions among the people making them, and the underlying technology verify that all users are keeping matching records.

However, the registration of a Trademark can imply high costs if the application is filed in different jurisdictions.

Trademark law recognizes rights to unregistered trademarks, that is to say those trademarks used to distinguish products and services, but never filed nor registered.

Trademark holders are beginning to leverage blockchain technology to secure and document proof of first and continuous use.

In the trademark area, Blockchain technology seems to have at least two immediately applicable uses:

• Creating blockchain-based records as a more secure and trustworthy recordkeeping system to prove trademark use; and

• Proving the provenance and legitimacy of goods in anticounterfeiting efforts.

There is unequivocal evidence of use in case of infringement for holders of unregistered trademarks as the blockchain technology can create immutable timestamps that can provide proof of first use, continuous use filing and lock in a highly credible date on which certain information related to a trademark was captured.

This can bring to the creation of a record of unregistered trademarks on the same distributed ledger, creating a comprehensive picture of all trademarks in use and the extent of use in a particular jurisdiction.

Blockchain records can be made for trademark use in any jurisdiction, that are quick to obtain and always accessible.

Nike Shoes will be Protected by the Blockchain

Nike has been recently awarded a blockchain patent by the USPTO to create digital versions of its shoes. Nike said that its customers will now be able to register the purchase of their shoes with a unique identification number.

An equivalent digital version of the shoe will be created through a cryptocurrency wallet connected with the user’s unique ID. The Blockchain will help users verify the authenticity of the shoes that the customers are purchasing.

The digital version of the shoes will contain a cryptographic token based on the Ethereum platform. In addition, it will also have information about the physical features of the product, including color, the material used, manufacturing details, and their “eco-sustainability” factor.

The registration of the product on blockchain would allow users to “securely sell or trade” the tangible form of the shoes.

It is noted that the “rights” to sneakers can be stored in a digital wallet along with the cryptocurrency. Also, with the help of digital media, Nike will be able to control sales volumes of CryptoKicks. The company has not yet announced the launch date.

The Story behind Tiffany's "1837 Blue Trademark"

Over the years, courts around the world have witnessed disputes involving a wide variety of intellectual property claims. Of these, those concerning the different shades of "colour" are of particular importance and have been of particular importance.

Since the early nineties, several brands, such as T-Mobile (magenta) and UPS (dark brown), have registered their colors over the years as proof of their power to retain customers and communicate a company's ethos.

In 1837, Charles Lewis Tiffany and John B. Young opened their first Tiffany & Young store in Lower Manhattan, right in front of City Hall Park.

Even before the brand became a major supplier of silver, the store sold stationery and other high-end products and the now iconic Blue Book, first published in 1845, already had a blue cover that was greener than the redbreasted egg that we now associate with the brand. Over the years, and into the next century, the Blue Book varied in tone until around 1966, when the company adopted a colour close to Tiffany Blue.

It is hard to pinpoint the exact moment when turquoise began to be associated with the company. The exact reason why the founders agreed on that particular shade is also unknown.

However, there is evidence that as early as 1889, the company had used color at the Universal Exhibition in Paris, demonstrating that even at that time, even in America, turquoise was a precious stone.

Again, Tiffany's famous orchid-shaped brooch, now owned by the Metropolitan Museum of Art, was housed in an elegant turquoise case with a cream-coloured lining. Even at that time, therefore, the company was already linking colour to the packaging.

This is not a marketing triviality, on the contrary, the blue box "is most likely the most recognizable and desired retail container in history". Charles Lewis, in fact, has always refused to sell the boxes on their own, claiming that they were a real symbol - "you can't get one of the most significant symbols of love and commitment without the Tiffany box".

With the advent of 1998, Tiffany & Co. finally registered its colour and packaging. Three years later, the brand also collaborated with Pantone to give life to its personal shade, the "1837 Blue", in memory of its founding year.

No other registered colour has become so closely associated with its trademark.

Over the years, in fact, many companies have successfully chosen objects and symbols, such as an apple, a swoosh, number 57, to represent their brand but no one has managed to claim something that was substantially more specific and applicable than 1837 Blue.

Supreme sued for alleged copyright infringement

A few days ago, ASAT Outdoors LLC, a clothing and fashion company based in Stevensville, Montana, sued Supreme Chapter 4 Corp. before a federal court in New York for violating the copyright of its camouflage press. In this regard, in fact, ASAT has accused Supreme of having "reproduced and exposed to the public without any authorization" its mimetic design, protected by copyright, using it as a print on a series of jackets, sweaters, cargo trousers and hats offered for sale on websites and in stores.

The Montana-based clothing company has claimed that it has never licensed the design to Supreme, nor has it given it permission or consent to use or sell the "camo" on its clothing, such as, for example, "work" jackets of 218 dollars and cargo trousers of 145 dollars.

ASAT also accused Supreme of intentionally and deliberately "violating its exclusive right, as the copyright owner, to reproduce, copy, display and make derivative works - that is, works based on or derived from an existing copyrighted work - of the protected camouflage print" in total violation of federal copyright laws.

In this regard, ASAT has asked the court to order Supreme to pay compensation for all damages, including but not limited to any profit that Supreme itself has obtained from the unlawful use of camo graphics or, alternatively, depending on what is the greater amount, "to pay compensation for legal damages up to $150,000 for each work infringed in the case of intentional infringement of the design”.

From the analysis of the above case, what is particularly interesting is that ASAT, in protecting its intellectual property right, has acted to claim its ownership over the design and not over the trademark.

This strategy seems curious because the Montana company would have had all the powers to demonstrate that consumers connect its specific camouflage print - a print that looks as if it could be somehow distinctive with respect to other types of camouflage on the market - with ASAT Outdoors LLC.

On that basis, in fact, and in view of its wide commercial footprint (consider the sale of its products to giants such as Walmart and Black Ovis) could have acted to ascertain the counterfeiting of its trademark.

In March 2018, Jordan Outdoor Enterprises ("JOE") sued Kanye West's Yeezy LLC before a federal court in Georgia for using some of its copyrighted camouflage prints on a number of Yeezy Season 5 garments and accessories. However, in this case the dispute was resolved in September 2018 after Yeezy and JOE reached "a separate agreement to resolve the complaints and related legal costs".

AC Milan scores against Marriot Hotels

The football club from Milan filed its logo in 2013 in the European Union for various products and services, among which class 43. However, the application in class 43 finds resistance, from AC Hotels, not the most usual opponent for AC Milan.

The AC-element is the most dominant element of AC Hotels and they have to keep AC-trademarks away in class 43, the most important class for AC Hotels. Besides their logo and the wordmark AC HOTELS BY MARRIOTT, their best weapon is the wordmark AC.

But the opposition is rejected. The trademarks are sufficient different. The only corresponding element is AC. According to EUIPO, “the letters AC are negligible elements due to their minuscular size and position in the middle of the other letters in the contested sign, and are not noticeable at first sight, considering also that this complex sign has other visually outstanding elements and, therefore, it is very likely that the letters AC are being disregarded by the relevant public.”

On 19 June 2019, the EU General Court ruled that the EUIPO had been correct in granting registration of the figurative sign that Associazione Calcio Milan SpA (AC Milan) had applied for. [Case T‑28/18].

WHO OWNS ROGER FEDERER'S RF LOGO?

In July 2018, Federer made the surprise switch from Nike to Uniqlo in a deal worth a reported $300million over 10 years. Speculation quickly rose surrounding Federer’s signature “RF” logo that appeared on his Nike products. The 37-year-old athlete previously claimed the logo was his, and it was expected that Uniqlo would adopt the “RF” branding.

Roger Federer is insisted to take back his famous logo because it’s his symbol but the problem is Nike was registered the “RF” Logo as a trademark and owned the rights to it Nike had already stopped selling Federer’s clothing in their stores all over the world for now.

Lately Uniqlo spokesman Aldo Liguori revealed that the apparel company has “no plans” to acquire the logo from Nike, even though the deal lapsed earlier this year in March, despite what Federer had told his fans last year. The departure from the classic “RF” logo might come to the disappointment of many long-standing followers of the eight-time Wimbledon champion.

So, what could Federer have done to avoid the issue and what are the key lessons for athletes?

Register the trade mark in your name - The most obvious solution would have been to ensure that the trade mark was registered in his name (or his company's name). He could have then, as part of his sponsorship agreement with Nike, granted Nike a licence to use the RF logo for the duration of the sponsorship agreement. Indeed, it is slightly surprising Federer did not register the RF logo in his own name given he is the registered proprietor of several trade marks, including an EU trade mark for "Roger Federer."

Use an assignment clause - Alternatively, if Nike had insisted on owning the RF Logo trade mark, the sponsorship agreement should have included an automatic assignment provision so that, once the sponsorship deal expired or if it were terminated by either party, the rights in trade mark are assigned to Federer.

FERRARI 250 GTO IS A WORK OF ART PROTECTED BY COPYRIGHT .

The Court of Bologna, Section specialized in business matters, has recently added the protection of copyright to the model of Ferrari, perhaps the best known and most appreciated ever: the 250 GTO.

The number, 250, stands for the displacement of each cylinder in cubic centimetres of the V12 3000 cc engine displacement. GTO stands for "Gran Turismo Omologata". This acronym will not be used for several years until the presentation in 1984 of the Ferrari 288 GTO.

According to the Court, "the personalization of the lines and aesthetic elements have made the Ferrari 250GTO a unique example of its kind, a true automotive icon". "Its artistic value has found objective and generalized recognition in numerous awards and official certificates", in "copious publications" and in the "artistic" reproduction on coins and in the form of "sculptures", periodically exhibited in museums.

The Court has thus issued an order prohibiting the defendant to reproduce the form of the 250 GTO in rendering and in car models.

The resistant company was in fact ready to launch on the market a dozen replicas of the 250 GTO, at a price of about 1 million euros each, which reproduced the legendary model of the '60s.

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.

EBAY JUDGED RESPONSIBLE FOR LATE SCAM REACTION

For the first time, a judgement by the Court of Milan establishes that eBay must reimburse users for the scams suffered when they buy online.

In the case analysed by the Court of Milan, 150 people had bought cellphones at bargain prices from a user on eBay, that were never delivered.

Some of them had finalized the purchase after the seller had already been reported to eBay by other users.

The judge was the first to correctly apply the law 70 of 2003 on the protection of consumers , according to which the provider assumes the responsibility of damages if the provider does not immediately act after having been informed by user. In this case, eBay took three months to close the scammer's account.

In dozens of previous cases, providers have always been considered not responsible because it was established that users should provide with a formal report, by registered mail. But the judge in Milan assessed that the normal reporting tool provided on the web by eBay itself was sufficient.

For its part, eBay has made it known that it will appeal the judgment and underlines how the judge limited himself to acknowledging the reimbursement but not damages and how he clarified that eBay cannot be considered responsible for the activities of the users.

THE "BREXIT BEER" CASE.

On January 30, 2019 EUIPO Grand Board of decisions was recently faced with the case of the application of the “Brexit” Trademark. The case concerns the eligibility for registration of the figurative sign “BREXiT” for ‘energy drinks containing caffeine; beer’ in Class 32.

 The application was refused by the examiner for lack of distinctiveness and against public policy as it was pointed out that the relevant public includes all consumers in the EU as they frequently encounter the term through the mass media and the internet.

With respect to the infringement of public policy or to accepted principles of morality the GB found that word ‘Brexit’ denotes a sovereign political decision, that was taken legally and has no negative moral connotations; it is neither an incitement to crime, nor an emblem for terrorism or a byword for sexism or racism. The word alone does not express an opinion. The fact that part of the UK public may have been upset by a controversial decision taken democratically does not constitute an offence. The GB therefore concluded that the sign cannot be deemed to be contrary to the accepted principles of morality, in and of itself, nor when used as a brand for the goods applied for.

Nevertheless, the term was, already at its filing date, so well-known to consumers as the name of an event of a historical and political nature that it would not be associated, prima facie, with specific goods originating from a specific trader. It may only acquire distinctiveness if consumers are sufficiently exposed to it in a trade context. Moreover, the colours and font are unable to divert the attention of the public away from the non-distinctive message conveyed by the word. The background evoking the Union jack accentuates this message. For the above reasons, the GB refused the application and dismissed the appeal.

NIKE'S ATTEMPT TO REGISTER THE WORD FOOTWARE

Late last month, Nike filed an intent-to-use trademark application for registration with the U.S. Patent and Trademark Office (“USPTO”) for the word “FOOTWARE” – for use in connection with sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems,” among other hardware and software products and services.  

It appears that Nike has tried to extend the registration to class 25 (i.e., the trademark class that covers shoes). Well that is a registration that not even Nike likely would not obtain, because the mark would be deemed descriptive of the products that refer to shoes, and thus, not registerable. 

It appears that Nike will start to brand any smart shoes as FOOTWARE as opposed to FOOTWEAR. Judging by just how famous and powerful its “Just Do It” and swoosh marks are, the new trademark just might catch on, and ultimately, serve to identify Nike’s smart shoes as a whole (and not just their tech components). As for the application, itself, it is currently pending review by the USPTO.

If the company can win over the USPTO on this one (and if the similar proceedings currently underway before the UKIPO are any indication, there’s a chance it will be able to), it might walk away with not just a major win but the beginning of a pretty striking trademark and branding scheme.

EU Trademarks and the Brexit

The UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.

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.

LETS MEET IN BOSTON! INTA 2019

INTA is the largest and most influential congress between brand owners and intellectual property (IP) professionals from around the world and across industries. Join us for our 141nd Annual Meeting in Boston, Massachusetts, May 18-22, 2019.

Our team is waiting for you at the 141th Annual INTA Meeting, in Boston 18-22 May 2019. To schedule an appointment, write us at info@tsclex.com

THE DISTINCTIVENESS OF THE "OSCAR" TRADEMARK

With the approach of the Academy Award better known as "the Oscar" it may seem useful to remember the events related to the brand that bears the name of the well-known film award.

The Oscar was awarded for the first time May 16, 1929 and the nickname was probably attributed by Margaret Herrick, an employee at the Academy of Motion Picture Arts and Sciences, who saw the statuette and said: "It looks just like my Uncle Oscar! "

The Oscar is a registered trademark of the Academy of Motion Picture Arts and Sciences and a few years ago, the Italian Sommelier Association was convicted in court before the Court of Rome guilty of having established the "Oscar of Wine".

In 2016, the Italian Supreme Court confirmed the validity of the Oscar Trademark with reference to the film industry, consequently attributing to the owner, the Academy of Motion Pictures, Arts and Sciences (AMPAS), full rights to its exclusive use.

On the other hand, the Court declared the Oscar trademark lapsed for vulgarization in relation to services of different nature, in this case the services related to education and entertainment in the Class 41 of the Nice Classification. The phenomenon of vulgarization occurs when a brand is no longer used to identify the products of an entrepreneur from those of another entrepreneur but, simply, to identify the product (regardless of who produces it).

The Supreme Court has established that in order to ascertain whether the Oscar trademark is vulgarized is the context in which it is used.

If used to identify an award ceremony the Oscar trademark is fully valid. But, used in other contexts, the term rises to a common word that identifies a prize or an event linked to excellence.