Use of sign as trademark and trade name held to infringe famous marks

Italy
The Specialised IP Division Court of Naples has held that use of the trademark EQUI CHAMPION (with a horseshoe represented as a reversed ‘C’ and the picture of a sulky inside) for specialised sporting goods and clothing in the equestrian sports sector infringed the famous trademarks of Champion Products Europe Ltd (ie, the CHAMPION mark and stylised ‘C’ logo). The court also held that the infringers’ use of EQUI CHAMPION in their trade names was unlawful, and ordered the decision to be published at the infringers’ expenses in Italy’s main newspapers and magazines.  
 
A court expert was appointed in this case to assess the potential remedies - damages or disgorgement of the infringers’ profits - as provided by Article 125 of the Italian Code of Industrial Property. Under this provision, the right owner may obtain the repayment of the infringer’s profits as an alternative to obtaining compensation for lost profits; this makes it easier for the right owner to meet its burden of proof. This confirms recent developmentsin Italian case law, whereby rights owners have been awarded more compensationthan in the past in infringement cases, in particular where this remedy is used in combination with pre-trial protective measures (seizure or description) in connection withthealleged infringer’s accounts (such protective measures were granted in this case).
 
Looking at the merits of the case, the court first emphasised the strong distinctive character and the large diffusionand renown of the CHAMPION mark, which led to a “strengthening” of the mark. Due to their reputation, the CHAMPION mark and the stylised ‘C’ logo enjoyed increased protection against the use of identical or similar marks in all classes of goods/services under Article 21(1)(c) of the code. Therefore, the court held that the CHAMPION mark had been infringed, taking into account the perception of the publicand, in particular, the fact that consumers could be misled into believing that the EQUI CHAMPION mark was a trademark of Champion,or that there was a connection between Champion and the goods bearing the EQUI CHAMPION mark. The court concluded that use of the EQUI CHAMPION mark exploited the renown of the CHAMPION marks.
 
The court had already protected the CHAMPION word mark in the same case at the interim stage in an order dated September 19 2008. This order was significant for procedural reasons, as the court held, for the first time, that the condition of ‘urgency’ - a prerequisite for the granting of interim measures in IP cases - should be construed less strictly following the implementation of the IP Rights Enforcement Directive (2004/48/EC)). According to the court, the implementation of the directive “attenuated… the link of instrumentality between pre-trial interim proceedings and proceedings on the merits, in that there is no obligation to bring proceedings on the merits to obtain anticipatory measures, as well as measures under Article 700 of the Code of Civil Procedure”. As a consequence, the condition of urgency “was strongly diminished” and “can never again… be identified with the ‘imminent and irreparable harm’ condition under Article 700 of the Code of Civil Procedure”. The court found “textual confirmation (for this conclusion) in the new version of Article 131 of the Code of Industrial Property, which makes the adoption of an interim measure… conditional upon there being an ‘imminent violation of the right, or continuation or repetition of the violation’”. This landmark ruling constituted a recognition and consecration of the strengthening of interim measures for the protection of IP rights in Italy.   
 
While the 2008 order concerned only the use of EQUI CHAMPION as a trademark, the court, in the present decision, also found that use of EQUI CHAMPION as a business name was unlawful. This is in line with the language of Article 22 of the Code of Industrial Property, which states that use of a sign as a “trade name, denomination or company name … or as a domain name used in the course of business” is equivalent to use as a trademark, provided that this use creates a likelihood of confusion among the public, or takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the mark.    
 
Cesare Galli, IP Law Galli, Milan

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