Use of 'Bulgari' as pseudonym infringes BULGARI mark, says court

Italy
The IP Division of the Court of Milan has issued a significant decision in favour of the owner of the trademark BULGARI. The case involved a dispute over the use of the name Bulgari as a pseudonym for the performance of services relating to the world of entertainment (January 16 2009).

Bulgari SpA is one of the symbols of Italian creativity in the field of luxury goods. In previous proceedings (ex parte order of October 28 2005, upheld by a ruling of November 14 2005; order of September 1 2006; ex parte order of March 9 and 10 2007, upheld by a ruling of April 27 2007), the Court of Milan had ordered the seizure of two publications (erotic calendars) bearing the name Brigitta Bulgari (the pseudonym of an actress). The court had also issued an injunction preventing the further distribution of the calendars and ordered that they be withdrawn from sale.

In its final decision of January 16 2009, the Court of Milan prohibited the defendants (the entities involved in the economic exploitation of the actress’s pseudonym and the actress herself) from using the name Bulgari as a pseudonym in any economic activity, even if the name was used in a non-distinctive way. The court clarified that under Italian law, any use for economic purposes of another party’s well-known mark in a way that may cause a likelihood of confusion among consumers, damage the distinctive character or reputation of the mark, or take unfair advantage of the distinctive character or reputation of the mark constitutes infringement of the mark, irrespective of whether the sign is used in a distinctive way.

This interpretation is in line with the wording and rationale of Article 20 of the Italian Code of Industrial Property, which seems to imply that infringement will occur (at least with regard to trademarks with a reputation) even if the similar sign is used in a non-distinctive way. The decision thus strengthens trademark protection in Italy significantly, in that it prohibits any parasitical activity - that is, even where the similar sign is used only for decorative, aesthetic or descriptive purposes.

The court also ruled that the defendants could not rely on the exception contained in Article 21 of the code (right to use one’s name) on the grounds that:

  • the provision did not apply to pseudonyms; and
  • use of the name Bulgari was contrary to the principles of fair practice and thus did not fall within the scope of Article 21 of the code and Article 7(1) of the First Trademarks Directive (89/104/EEC), as outlined by the case law of the European Court of Justice (eg, see Gillette (Case C-228/03)).
The court granted damages to Bulgari in an amount of €100,000, with leave to bring further proceedings to obtain higher damages. The court also ordered that a €5,000 fine be paid for any violation of the injunction issued, which is one of the highest amounts ever granted in Italy for trademark infringement.
 
Cesare Galli, Studio Galli Milan Brescia Parma, Milan

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