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07 February 2011
In a recently published decision, the IP Division of the Court of Bari has found that Adidas's well-known three-stripe mark was infringed by the use of four stripes on similar products.(1)
The court first emphasised that Adidas's mark, due to its widespread diffusion and reputation, benefited from a wider scope of protection. Therefore, it ruled that the addition of a fourth stripe was insufficient to exclude the possibility that consumers would at least establish a link between Adidas and goods bearing four stripes. The court considered that the signs were identical, since the addition of a fourth stripe was irrelevant from the point of view of the relevant consumers. Therefore, use of the four stripes could be prohibited under Article 5(1)(a) of the EU Trademarks Directive (89/104/EEC), as well as under Articles 5(2) and 5(1)(b).
The decision indicates that all of Italy's specialist IP divisions take a common position on the enhanced protection of famous marks. It also confirms Italian court practice in providing a wide scope of protection to well-known marks. This trend is based on the principle that trademarks have a significant economic function: they are a fundamental business communication tool, since they not only inform the public of the origin of the goods and services for which they are used (ie, the traditional function of the trademark as an indicator of origin), but also symbolise the message or image that the public associates with the goods or services in question. The market value of a trademark resides mainly in this message and, in particular, in the capacity of a mark to evoke positive associations among consumers. This evocative capacity is central to a brand, which confers significant added value on goods and services.
Legislative and judicial developments in Italy since the implementation of the directive and the introduction of the EU Community Trademark Regulation (40/94) have led to increased recognition of the role that trademarks play in communicating such messages. In turn, this recognition has encouraged the protection of trademarks against parasitic exploitation, whether through a likelihood of confusion or a likelihood of association (ie, protection against the use of identical or similar signs in a way that involves the unauthorised appropriation of the goodwill in a trademark).
A leading decision in this field was handed down by the Court of Milan in a case involving the trademark BULGARI.(2) In this case, the court prohibited the defendants - a pornographic actress and the companies involved in her activity - from using the name 'Bulgari' as a pseudonym in the course of their economic activity. The same court subsequently prohibited use of the trademark UPSTAR for casual clothing on the grounds that there was a likelihood of confusion with the well-known trademark PIN-UP STAR for beachwear.(3) The court found that a likelihood of association also existed, as use of the UPSTAR mark would be likely to bring the well-known mark to mind. On November 18 2008 and October 20 2009 the court confirmed that the colour of Ferrari's Formula 1 racing cars was protectable as an unregistered trademark with a reputation. It prohibited the use of the colour red for products connected with Formula 1 (ie, toy cars in the first case and unauthorised merchandise, including clothes, in the second). In all of these cases, the perception of the public was paramount - an interpretation that is consistent with EU case law.
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