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09 June 2014
On April 8 2014 the Court of Milan (Specialised Company and IP Division) issued a landmark decision in a case concerning the right of a fashion designer to continue using his name as a trademark after leaving the company that he founded and that still holds the rights to the trademarks containing the designer's name and the company name.(1)
The case concerned well-known fashion designer Alviero Martini, creator of the famous 'map' print, who in 2005 left the company that he had founded. The company still bears his name (Alviero Martini SpA) and holds several trademarks created by the designer, including ALVIERO MARTINI PRIMA CLASSE (in which the font used for the name 'Alviero Martini' is smaller and less conspicuous than that used for the words 'Prima Classe'). The court held that, notwithstanding the existence of such trademarks, the exclusive right to use the name 'Alviero Martini' in the course of trade still belonged to the designer, as it was a well-known sign protected by Article 8(3) of the Industrial Property Code. Accordingly, the court found that use by the company of the name 'Alviero Martini' alone on apparel (ie, not within the trademark ALVIERO MARTINI PRIMA CLASSE) was unlawful; the court prohibited the continuation of such illicit behaviour and ordered the company to pay damages to the designer.
The court also found the company liable for breach of the contract governing the relationship between the parties, both for having used the name 'Alviero Martini' alone in the course of trade and for having failed to communicate the end of the collaboration between the designer and the company.
However, the court rejected the designer's claim of forfeiture of the company's trademarks on the ground of deceptiveness, since it had not been proven that the company had:
"actively operated, with specific and concrete means, for the purpose of confirming in the consumer's perception that the assigned trademarks maintained a connection with the person and the activity of the designer, now totally estranged from the company."
The decision is important in two respects. First, it confirms that Italian law gives the holder of a famous name the exclusive right not only to register his or her name as a trademark,(2) but also to use the name in circumstances where such use implies a connection to the famous person or brings that person to mind.
Article 8 of the Industrial Property Code was amended in 2010 and now expressly provides for such protection.(3) Therefore, in Italy, well-known signs are considered a sui generis category of distinctive sign, protected (even without being registered as trademarks) against any commercial activity aimed at exploiting the market value of such signs without authorisation. This is consistent with a comprehensive system for the protection of famous names (civil and commercial) and of the value of the sign as a communication tool, by protecting both the rights owner against any behaviour which constitutes a parasitic exploitation of such value and the public against deception. These two types of protection, considered as a whole, represent – within the perspective of Italian scholars and case law – the rationale of the rules on distinctive signs.
Second, and in line with this general approach, the decision confirms that in Italy, the deception of the public is a relevant factor for the forfeiture of trademarks, with regard not only to the material features of the product, but also to any other circumstance which is essential in the consumer's opinion. Such deception gives rise to forfeiture when the rights holder does not comply with the message connected to its trademark.(4)
However, the decision does not seem to follow this approach completely, since it does not burden the rights holder with a positive and permanent duty to inform the public for the purpose of avoiding forfeiture, but rather imposes simply a "duty to use the mark in a non-misleading manner" – that is, the rights holder must avoid engaging in misleading behaviour, but is not required to rectify any actual deception among the public that is not caused by its positive behaviour.
This does not seem to be consistent with the primary role that the perception of the public plays with regard to the distinctiveness of signs. In particular, Italian scholars have highlighted, especially for fashion products, the existence of 'immaterial' features (eg, creative authorship and stylistic consistency) which take on critical importance for consumers. The fact that trademarks are now protected against non-confusing use of identical or similar signs – where such use is detrimental to, or takes advantage of, the distinctiveness or reputation of the trademark – requires extensive protection against deception among the public, with the aim of balancing the different interests of players in the field (ie, rights holders, competitors and consumers) and coordinating trademark law with other aspects of business communications, such as advertisements.(5)
Therefore, this decision is an important contribution in the debate on the functions of trademarks and other distinctive signs, and on the need to adjust the assessment of validity and protection to reflect the reality of the market.
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) The company name consisted of the designer's name followed by the initials 'SpA', the Italian acronym for a joint stock company.
(3) See Galli, "Codice della Proprietà Industriale: la riforma 2010", Milano, 2010, p 22 e ss.
(4) See Vanzetti-Galli, "La nuova legge marchi", Milan, 2001, p 5; Frassi, "Lo statuto di non decettività del marchio tra diritto interno, diritto comunitario ed alla luce della disciplina sulle pratiche commerciali ingannevoli", in Riv dir ind, 2009, I, pp 29 ff; Galli, "Lo statuto di non decettività del marchio: attualità e prospettive di un concetto giuridico", in "Studi in memoria di Paola Frassi", Milano, 2010, pp 371 ff; and Ricolfi, in Auteri-Floridia-Mangini-Olivieri-Ricolfi-Spada, "Diritto industriale. Proprietà intellettuale e concorrenza", Torino, 2009, pp 114.
(5) Galli, supra note 4.
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