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16 December 2013
On October 25 2013 the most important annual Italian conference in the field of IP law was held at the University of Parma, this year entitled "Furniture and IP Rights in Italy and China – registered and unregistered design, distinctive signs and shapes, and copyright in the largest market in the world". The conference followed the successful IP fair held in Parma on September 30 2013. The conference saw the participation of many experts in the field, including both Italian and Chinese speakers. Several business representatives also shared their experiences.
One of the most debated topics of the conference was the parodistic use of a trademark for both identical and unrelated products. Italian scholars have found that parody falls within the concepts of unfair advantage and damage to the reputation of a trademark – both of which are prohibited by Article 20 of the IP Code – since a parody:
"establishes a link with the message that the parodied trademark bears; this link determines an advantage for the author of the parody. This advantage is based on that link (and therefore on the basis of the exploitation of the reputation linked to the parodied trademark) and often it involves also a detriment for the trademark, especially when parody is vulgar or otherwise is able to determine in the eyes of the relevant public an association between the parodied trademark and elements inconsistent with the message it bears, which can then 'tarnish' the trademark itself."(1)
The same conclusion has been reached in Italian case law. The main authority in this respect is the decision in Agip, issued by the Court of Milan on March 4 1999. From the perspective of non-confusing counterfeiting, the court considered as wrongful the use of Agip's(2) six-legged dog logo on t-shirts without Agip's permission and accompanied by the words "Acid self area", which established – by means of parody – a link between the logo and drug use.
However, there have been divergent court decisions. In particular, the Court of Milan, in an order of December 31 2009, ruled that parody does not constitute confusing counterfeiting because:
"the ironic quote of a competitor famous trademark, performed with parodistic purposes through the use of graphic elements recalling the trademark, determines neither a danger of confusion or unfair advantage on the reputation of the trademark, when the average consumer, in the relevant sector, is able to immediately understand the real purposes of the activity."
The same conclusion was reached by the Court of Rome on June 23 2008, in a case where both the parodistic and the parodied signs consisted of magazine titles – since both of the arguments in favour of lawfulness of parody in the context of copyright could be useful in part.
More generally, scholars have also wondered whether the parody of a trademark could be based on a 'legitimate cause' that would exclude the unlawfulness of such use pursuant to Article 20 of the IP Code and parallel Article 9 of EU Regulation 207/2009 on Community trademarks. In this regard, however, it has been noted that "the parody performed in the context of a work of art is different from a 'commercial' parody performed in order to sell goods or services".(3)
It is evident from these observations that traditional remedies related to the likelihood of confusion are inadequate to combat this type of trademark use – especially with regard to parody, which can be used to achieve a competitive advantage. It is also evident that the view held by some scholars that parodies are harmless or minimally harmful (according to the 'traditional' opinion that denies the occurrence of any compensable damage in the absence of confusion as to origin) is not applicable to the Italian legal system, which protects trademarks against all forms of parasitism. Italian law is clear that parodies have a strong parasitic nature, entailing the establishment of a link with the business of the legitimate holder of the trademark. Parodies sometimes lead consumers to think that the products or services bearing the parodistic sign can be substituted with those bearing the original trademark, which essentially produces the effect of confusion from an economic perspective.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094), fax (+39 02 5412 4344) or email (firstname.lastname@example.org). The IP Law Galli website can be accessed at www.iplawgalli.it.
(1) See Galli, "La protezione del marchio del marchio oltre il limite del pericolo di confusion", in AAVV, Segni e forme distintive. La nuova disciplina, Milano, Giuffré, 2001, p 45.
(2) Now Eni, one of the most prominent Italian petrol retailers.
(3) Supra note 1, which underlines that "those conclusions seem to be perfectly consistent with the Italian legal system on trademark protection" and based on "the case law that excludes that commercial communications and advertising may take advantage of the provision of Article 21 of the Constitution [on freedom of expression]"; rather, it is believed that they fall under Article 41 of the Constitution (on freedom of economic activity). On this point, see Ghidini, Introduzione allo studio della pubblicità commerciale, Milano, Giuffrè, 1968, p 229. For the case law on the application of Article 41 of the Constitution to advertising, see Constitutional Court Decision 231 of October 17 1985.
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