Trademark exhaustion and cosmetics in Milan

pexels-photo-208052.jpegThe Court of Milan ruled in a case regarding trademark infringement and the principle of trademark exhaustion.

The Italian cosmetic producer Landoll S.r.L accused a retailer of infringement of its registered trademarks NASHI and NASHI ARGAN because the retailer wasn’t authorized to sell the products bearing these marks.

The defending argument of the retailer was that it had been selling these products lawfully because of the concept of trademark exhaustion in the EU according to which:

1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

The Court of Milan, however, disagreed with that argument applying the Coty judgment of the European Court, stating that there was a trademark infringement because in the case at hand Landoll S.r.L had developed a legitimate selective distribution system of authorised dealers in order to ensure maximum consumer satisfaction as a result of the products use. In that way, the cosmetic company tried to safeguard its trademarks value among the consumers.

Source:K&L Gates – Arthur Artinian, Jennifer P.M. Marsh, Francesco Carloni and Gabriela R. Da Costa, Lexology.

Image: kinkate , Pexels.

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Brief IP news

briefs_1131. DesignEuropa Awards 2018 – apply or nominate by May 15. For more information here.

2. The Protection of Fashion Shows in Italy: An Uncharted Stage. For more information here.

3. All rights reserved – advantages of copyright registration. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

 

A fight with buscuits and cushions in Milano

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.

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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.

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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.

 

A wine battle before the General Court of the EU

The General Court of the European Union ruled in the Case T‑102/17, Cantina e oleificio sociale di San Marzano v EUIPO.

This case concerns an attempt by the Italian company  Cantina e oleificio sociale di San Marzano to register the following European trademark for Class 33 – wine:

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Against this mark, an opposition was filed by the Spanish company Miguel Torres based on an earlier mark Sangre de Toro for the same goods.

Initially, EUIPO dismissed the opposition, but after that the Board of Appeal upheld it.

The applicant appealed before the General Court, stating that there are no similarities between the goods, taking into consideration the fact that both wines have different geographical origin, different distribution and so on.

The Court dismissed these arguments as groundless and upheld the opposition.

Copying works on cloud – a European court decision

cloud-computing-1990405_960_720The European court has ruled in case C‑265/16 VCAST Limited v RTI SpA. The case concerns the following:

VCAST is a company incorporated under UK law which makes available to its customers via the Internet a video recording system, in storage space within the cloud, for terrestrial programmes of Italian television organisations, among which are those of RTI.

It is apparent from the order for reference that, in practice, the user selects a programme on the VCAST website, which includes all the programming from the television channels covered by the service provided by that company. The user can specify either a certain programme or a time slot. The system operated by VCAST then picks up the television signal using its own antennas and records the time slot for the selected programme in the cloud data storage space indicated by the user. That storage space is purchased by the user from another provider.

VCAST brought proceedings against RTI before the specialised chamber for company law of the Tribunale di Torino (District Court, Turin, Italy), seeking a declaration of the lawfulness of its activity.

In the course of proceedings, by an order for reference of 30 October 2015, that court upheld in part the application for interim measures submitted by RTI and prohibited VCAST, in essence, from pursuing its activity.

Taking the view that the resolution of the case in the main proceedings depended in part on the interpretation of EU law, in particular on Article 5(2)(b) of Directive 2001/29, the Tribunale di Torino (District Court, Turin) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

(1) Are national rules prohibiting a commercial undertaking from providing private individuals with so-called cloud computing services for the remote video recording of private copies of works protected by copyright, by means of that commercial undertaking’s active involvement in the recording, without the rightholder’s consent, compatible with EU law, in particular with Article 5(2)(b) of Directive 2001/29 (as well as Directive 2000/31 and the founding Treaty)?

(2)      Are national rules which allow a commercial undertaking to provide private individuals with so-called cloud computing services for the remote video recording of private copies of works protected by copyright, even where the active involvement of that commercial undertaking in the recording is entailed, and even without the rightholder’s consent, against a flat-rate compensation in favour of the rightholder, in essence subjecting the services to a compulsory licensing system, compatible with EU law, in particular with Article 5(2)(b) of Directive 2001/29 (as well as Directive 2000/31 and the founding Treaty)?’

The Court decision:

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, in particular Article 5(2)(b) thereof, must be interpreted as precluding national legislation which permits a commercial undertaking to provide private individuals with a cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent.

Michelangelo’s David can’t be used for commercial purposes – a court decision in Italy

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Eleonora Rosati published an interesting article about a lawsuit in Italy concerning the use of the image of Michelangelo’s David for commercial purposes. The Florence Court of First Instance prohibited such use by a travel agency based on the Italian Cultural Heritage Code which provides that the authority which administers a cultural good has the right to allow its reproduction, subject to an application and the payment of a royalty set by the authority itself, with the sole exception of reproductions of work for non-profit purposes.

Taking into account that Michelangelo’s David is a cultural good and the fact that the use at hand has a commercial effect the Court issued an injunction against the travel agency.

More information can be found here.

TV Formats with copyright protection in Italy

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The Italian Supreme Court has issued a decision that some TV formats can take advantages of copyright protection.

As it is well-known many countries around the world don’t acknowledge specific copyright protection for TV formats mainly because they don’t fit well in the definition for such protection.

In the Italian case, however, the court considers these formats as eligible for copyright protection if they can meet some requirements such as identification of the structural elements of the story, as well as its space and time collocation, the main characters and the main thread of the plot. In addition, the structure must be repeatable and possessing at least a modicum of creativity.

More information here.

Source: IP Kat.