It’s time for elections. It’s time for break..fast news.
The ruling of the month comes from Milan(sentenza 830/2018) and is all about cookies, chocolate chips, baking powder… And trademark, of course.
But let’s start from the beginning, before we all get too hungry.
You might know “Barilla”, the Italian company that is worldwide known for its handmade pasta. Yes, the one you will never find at Tesco. Well, apparently, the same company is also quite good at baking. “Gocciole”, “Pan di Stelle”, “Rigoli” and “Ringo” are just some of the biscuits produced by Barilla, for the joy of hundreds of hungry Italian people. And they are tasty, indeed. So tasty, that somebody (Italy Fashion s.r.l – the defendant) had the brilliant idea to create an ENTIRE Barilla-based cushion collection. The idea behind it, we guess, was combining the sweetness of the famous cookies with the softness of the pillows.
(Well done to the marketing team.)
But in this fairy tale, made up of sugar and spice and employees ‘bonus’, there is an obstacle or, precisely, nine of them. Yes, because Barilla, well aware of the success of its biscuits, had already regular registrations in place for all of them. Therefore, on this ground, the company sued its competitor before the Court of Milan for the infringement of its trademarks. In reviewing the relevant facts, the Court found in favour of the claimant and condemned the defendant to the payment of the damages and the costs of litigation.
The case is particularly interesting as it gives us the opportunity to revise some of the fundamental rules in trademark law. In particular, both the notion of reputed marks and the one of online infringement which were analysed by the judge.
Notion of reputed marks
The main argument of the defendant was the absence of a registration for its marks in class 24 (for textiles). Therefore, protection would have not be available for Barilla. On its side, in the claimant’s view, this would not constitute an issue. And in fact, the relevant provision to apply in this case would not be Art. 20(a) cpi on double identity but Art. 20(c) cpi on reputed marks. According to the latter rule, a trademark will enjoy extended protection, provided that it is well known or reputed and its use by the defendant results in a potential prejudice for the claimant. The first of the two conditions, according to General Motors[1], refers to a knowledge threshold, to be assessed based on different factors. In particular, the market share, the geographical extension of the use, its duration as well as the investments made can all contribute to the assessment. Looking at the prejudice, according to Art. 20 cpi, it can alternatively consist in a damage to the distinctive character/reputation of the mark (dilution by blurring and by tarnishment) or unfair exploitation of someone else’s reputation (free riding). The Court of Milan found both the requirements being met, given that on one side Barilla’s trademarks constituted reputed marks and, on the other, the act of the defendant consisted in a form of parasitical exploitation, following art. 2598 of the Italian Civil Code. And in fact, it resulted in the slavish imitation of the entire collection Barilla.
Assessing the online infringement
Fair enough for the real world. But how about the virtual one?
And in fact, the marks of the claimants had been used also in the online world as metatags, keywords and domain names. Intervening on this point, the Italian judge referred back to the principles established by the ECJ in its leading cases. In particular, following Interflora[2], Google France[3] and Portakabin[4], for online infringement to take place, it will not be enough to demonstrate the use of identical marks for identical products. And in fact, in addition to this, one has to prove that at least one of the trademark functions was affected (Loreal v Bellure[5]). This normally happens when the origin function of the mark is compromised, with the consequence that users cannot recognise where the goods come from anymore. According to Interflora, the present assessment has to be made from the point of view of the average consumer who is “reasonably well informed, reasonably observant and circumspect”. In applying these principles, the Court of Milan, found in favour of Barilla, given that the use of the claimant’s marks as AdWords was not aimed at offering alternative goods, but only at exploiting the reputation of the brand.
Surprised?
Not really. Sometimes winning is just a piece of cake.
[1] General Motors Corporation v Yplon SA.
[2] Interflora Inc. and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Ltd.
[3] Google France SARL and Google Inc. v Louis Vuitton Malletier SA (C-236/08), Google France SARL v Viaticum SA and Luteciel SARL (C-237/08) and Google France SARL v Centre national de recherche en relations humaines (CNRRH) SARL and Others (C-238/08).
[4] Portakabin Ltd and Portakabin BV v Primakabin BV.
[5] L’Oréal SA, Lancôme parfums et beauté & Cie SNC e Laboratoire Garnier & Cie contro Bellure NV, Malaika Investments Ltd e Starion International Ltd.
