Region: Italy

Court of Appeal revokes mark for non-use in landmark decision

The Court of Appeal of Milan has issued a landmark decision ordering the revocation for non-use of the trademark LAMBRETTA for motorcycles, even though the mark is still well known in Italy. The court seemed to take the view that 'reputation' is not merely an abstract element that can be used and marketed independently, but is a quality attached to a trademark, which must be valid and in use.

25 November 2013

Supreme Court rules in favour of Czech brewery in BUDWEISER dispute

In the longstanding dispute between US company Anheuser-Busch LLC and Czech brewery Budweiser Budvar over the mark BUDWEISER for beer, the Supreme Court has reversed a decision of the Court of Appeal in favour of the US company. Among other things, the Supreme Court found that the word 'Budweiser' (meaning 'originating from Budweis') was still widely recognised, even though the name of the old city of Budweis was now Budejovice.

25 October 2013

Italy introduces 'Drop Time' process

Registro.it, the registry managing the ‘.it’ ccTLD, has introduced a new process called ‘Drop Time’, which will publish lists of ‘.it’ domain names that are due to be deleted. Registrants of ‘.it’ domain names should be aware of the fact that any ‘.it’ domain name that is allowed to lapse may be targeted by third parties upon deletion.

20 September 2013

Injunction upheld in largest case of imitation of unregistered shape marks ever heard

In the biggest case of unfair competition for imitation and infringement of unregistered shape marks ever heard in Italy, the Court of Milan has upheld an injunction preventing the defendants from manufacturing, marketing, offering for sale and advertising over 200 types of copycat products. This case confirms the high level of protection granted to the shape of products in the country.

12 July 2013

Prada eyewear granted broad protection based on unregistered Community design rights

The Milan District Court has confirmed that sunglasses sold by Prada SA under the name ‘Postcards’ are protected by unregistered Community design rights, and found that a model of sunglasses called ‘Lollipop’ sold by Nau Srl infringed such design rights. The decision is significant because eyewear is a particularly crowded field in terms of designs, and is often the victim of parasitic imitations.

31 May 2013

Gucci loses home match against Guess

The Milan Court of First Instance has dismissed all claims by Italian fashion house Gucci in a four-year trademark infringement and unfair competition dispute with US company Guess? Inc. In an 83-page ruling, the court not only rejected all of Gucci's claims, but also ordered the cancellation of three of Gucci’s Italian trademarks.

29 May 2013

Specialised IP Division of Turin Court implicitly applies HAG II doctrine

The Specialised IP Division of the Court of Turin has enjoined use of the trademark HERAKLITH - owned by an Austrian company since the early 20th century, but never used in Italy - on the grounds that it infringed the ERACLIT mark, owned since 1925 by the homonymous Italian company. The court implicitly applied EU case law relating to similar or identical trademarks belonging to different parties in different member states.

27 November 2012

Dutch brewer can continue to use BAVARIA marks, despite 'Bayerisches Bier' PGI

The Italian Supreme Court has held that six BAVARIA marks for Dutch beer can be used in Italy, notwithstanding the registration in 2001 of the protected geographical indication '<i>Bayerisches Bier</i>' by the German association for the protection of Bavarian brewers. The court observed that the trademarks had been registered in good faith before the date of registration of the PGI, and that no EU regulation had been breached.

12 October 2012

Court orders defendant to buy back infringing products

The Specialised IP Division of the Court of Turin has ordered that the infringer of three designs owned by Blufin spa - the owner of the famous haute couture trademarks BLUMARINE and BLUGIRL - buy back the counterfeit products from the shops and withdraw the relevant advertising material. It is the first time that such a broad order has been issued.

05 September 2012

Court rules on use of third-party trademarks in commercial advertising

The Specialised IP Division of the Court of Turin has issued its decision in a case involving Nestlé SA, the owner of the NESPRESSO mark, and Italian company Vergnano SpA, which claimed to sell coffee capsules that were compatible with Nespresso machines. The court ordered that Vergnano add, in its commercial communications, specific information regarding the type of Nespresso machines with which its capsules were compatible.

02 August 2012

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