Famous ARMANI mark trumps registrant's right to use own surname

Italy

In Giorgio Armani SpA v Luca Armani (Case 4351/1998), the Civil Court of Bergamo has ordered the cancellation of the domain name 'armani.it'. The court found that the case did not fall under the scope of Article 1bis of the Italian Trademark Act, which provides, among other things, that the owner of a trademark cannot prohibit the use by others of their own name.

Luca Armani registered the domain name 'armani.it' for use in connection with the sale of stamps. Giorgio Armani SpA, the fashion company, claimed that the domain name infringed its famous trademark ARMANI.

The court upheld Giorgio Armani's request and ordered that the disputed domain name be cancelled. The court's grounds for reaching this decision were as follows:

  • Although there are no specific provisions of Italian law dealing with conflicts between identical (or confusingly similar) domain names and trademarks, such disputes fall within the ambit of the Italian Trademark Act.

  • The Naming Rules set by the Italian Naming Authority (and, in particular, the first come, first served principle) are not applicable to the conflict between trademarks and domain names. In addition, the rules have a contractual nature and do not have the same value and effect as provisions of law.

  • The trademark ARMANI has a reputation in Italy (and abroad) and requires special protection. Therefore, the principle set out in Article 1bis of the Italian Trademark Act does not apply.

Francesca Rolla, Lovells, Milan

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