adidas’ three-stripe mark infringed by use of four stripes

Italy
The Specialised IP Division of the Court of Bari has found that adidas’ well-known three-stripe mark was infringed by the use of four stripes on similar products (June 30 2010, only recently published).
 
The court first emphasised that the 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 goods bearing the four stripes and adidas. According to the court, both 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 not only under Articles 5(2) and 5(1)(b) of the First Trademarks Directive (89/104/EEC), but even Article 5(1)(a) of the same directive. Importantly, the decision indicates that all the IP divisions throughout Italy share a common stance on the enhanced protection of famous marks.
 
The decision also confirmed the trend whereby the Italian courts have provided a wide scope of protection to well-known marks. This trend is based on the idea that trademarks have an important economic function: they are a fundamental instrument in business communication, since they not only inform the public as to 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 represent a symbol of the ‘message’ associated to the goods or services at issue in the public’s mind.
 
Nowadays, the market value of a trademark is mainly concentrated on this ‘message’ - and, in particular, on the capacity of the mark to evoke positive images for consumers of the goods and services bearing the mark. Economists thus prefer to speak of ‘brands’, which, thanks to this evocative capacity, confer a significant added value on the goods and services.
 
Recent legislative and judicial developments have led, following the implementation in Italy of the First Trademarks Directive and the introduction of the Community Trademark Regulation (40/94), to the recognition of the role played by trademarks as instruments of communication. In turn, this recognition has led to 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 which involves the unauthorised appropriation of the trademark’s goodwill).
 
A leading case in this area is the October 28 2005 decision of the Court of Milan in a case involving the BULGARI mark, which was later upheld by the court in a final decision. 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 their economic activities (for further details please see “Use of 'Bulgari' as pseudonym infringes BULGARI mark, says court”). In another decision (August 27 2007), the Court of Milan prohibited the use of the mark UPSTAR for casual clothing on the grounds that there was a likelihood of confusion with the well-known mark PIN-UP STAR for beachwear, which included a likelihood of association (ie, use of the UPSTAR mark would bring the well-known mark to mind).
 
Finally, on November 18 2008 and October 20 2009 the Court of Milan confirmed that the colour of Ferrari’s Formula 1 cars was protectable as an unregistered trademark with a reputation. The court prohibited the use of the colour red for products connected to Formula 1 - specifically, toy cars in the first case and unauthorised merchandising products, including clothes, in the second (for further details please see “Overall appearance of Ferrari Formula 1 cars protectable as unregistered mark” and “Colour red protectable as unregistered mark with a reputation”).
 
In all these cases, the perception of the public was paramount - this is in line with the decisions of the Court of Justice of the European Union in this respect.
 
Cesare Galli, IP Law Galli, Milan

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