Bologna Court orders defendant to cancel domain name registration and remove any link to that domain name

Italy

On September 3 2015 the Specialised IP Division of the Court of Bologna issued a preliminary injunction enjoining a hotel from using the sign Hotel Ink 124 and the corresponding domain name, 'www.hotelink124.it', as these were confusingly similar to the earlier trademark INC HOTEL, registered by a large Italian chain of hotels, INC Hotels Group.

The decision is remarkable in that the court issued an injunction against use not only of the sign INK124 and of the domain name 'www.hotelink124.it', but also of any link to that domain name on other websites, even if they belonged to others. This is significant as it means that the defendant must remove the infringing sign from the web.

It is also remarkable that infringement was found even though use of the infringing mark commenced before the original mark was registered. This is due to the fact that the owner of the original mark had used its own mark with a national reputation since 2004. In this respect, an Italian Supreme Court judgment states that the novelty of a trademark must be evaluated by taking into consideration the prior use made by the owner of that mark (see Supreme Court of Cassation, No 14473, July 9 2005: "The novelty of the earlier mark must be checked with reference to the time when such earlier use began").

On the merits, the court considered that “it is clear that there is a likelihood of confusion, even for a qualified customer, resulting from the use of denominations such as 'Hotel INC' and 'HotelInk124'". Based on a semantic, visual, graphic and phonetic comparison of the marks, the court found that "the general impression that they convey leads to the conclusion that there is a strong similarity between them that is able to cause a likelihood of confusion among the public, at least in terms of a connection between the companies". For the same reasons, the court considered that it was also illegal to use the sign Hotel Ink 124 and the corresponding domain name under the unfair competition law, stating that, since “the competing companies operate in the same sector and geographical area and share the same customers, such use constituted a confusing and parasitic anti-competitive practice".

The court, following the case law of the Court of Justice of the European Union, whereby a high similarity between the products can offset possible differences between the trademarks, stated that “without any doubt, the high similarity between the services provided by the parties contributed, together with the similarity between the trademarks, to intensify the likelihood of confusion for the consumer as to the origin of the said services, considering also the similarity between the activities performed by the parties and the type of clients to whom the services are directed".

The court also considered that “sponsorship confusion” or “confusion in a wider sense” was relevant, because it was “highly probable that the services offered by the defendant under the trademark HOTELINK124 [and the services of INC Hotels Group] would be considered as being provided by the same enterprise or by affiliated undertakings”. Nevertheless, the court did not assess the confusion in abstract terms, but with regard to concrete circumstances, taking in consideration all the concrete elements involved in this specific case. In particular, the court took into account the fact that the claimant had provided evidence - advertising campaigns, nationwide promotional activities and various industry awards - of its trademark’s notoriety.

The court ordered the defendant to remove the hotel sign and to withdraw from the market all products bearing the counterfeit mark. Moreover, the court imposed a penalty on the defendant for any violation of, or each day of non-compliance with, the injunction, as well as the other measures, in particular in case of delay in removing the hotel sign or the illicit material from the web and in case of delay in removing other counterfeit material and/or material that could be classified as an act of unfair competition.

It must be noted that the said measures, which were granted during emergency proceedings, do not need to be confirmed during subsequent proceedings on the merits in order to become final. In fact, Article 132 of the Code of Industrial Property, as amended in 2010, expressly states that injunctive relief (including a fine or an order for withdrawal from the market) granted in emergency proceedings may become final, unless one of the parties starts proceedings on the merits.

This means that the civil protection of IP rights in Italy is extremely efficient, since proceedings on the merits are necessary only when a claimant asks the court to order the infringer to:

  • pay compensation and surrender the profits resulting from the infringement;
  • pay the costs of publication of the ruling in newspapers or magazines; and
  • hand over the infringing goods to the rights holder or arrange for the destruction of the goods at the expense of the infringer.

Therefore, in those cases where the infringement is stopped from the outset thanks to an injunction (which usually takes a few days, or a few months at most), and before any significant damage has occurred, the IP owner has no need to file proceedings on the merits. The resolution of such disputes is, therefore, extremely fast and cost-efficient.

Cesare Galli, IP Law Galli, Milan

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