Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.
Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.
Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.
As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.
According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.
The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.
This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.