The Milan IP Court in the ParkToFly vs Fast Parking case
On 5 October, the IP Court of Milan (Judge Mrs Tavassi) issued an interim decision in a dispute between two companies managing paid car parks, respectively the licensor and licensee of the ParkToFly trademark and of the booking software hosted on the domain name www.parktofly.it.
According to the claimant, the respondent (licensee) had interrupted the payment of the royalties due, while continuing to use the ParkToFly trademark. In addition, it had created a new booking system called “Fast Parking”, hooking the ParkToFly trademark (with statements like “ParkToFly becomes Fast Parking”), had told customers that the ParkToFly trademark and software were old and destined to disappear, and had invited customers to throw away the ParkToFly card and make their reservations through the new booking system only, thus also using the claimant’s database in order to obtain the list of customers to which the communication was sent.
The appointed Judge had granted the requested injunction ex parte, enjoining the respondent from: i) continuing the acts of denigration against the ParkToFly trademark and website; ii) any action aimed at the withdrawal of the ParkToFly card or at suggesting customers throw it away and replace it with the Fast Parking card; iii) the further spread of communications to the ParkToFly customers; with a penalty of € 100 for each violation and € 2,000 for each day of delay.
In joining the proceedings, the respondent stated that it was in fact the claimant which unlawfully prevented them from using the www.parktofly.it platform, which had forced them to create the new Fast Parking software and advise customers to make reservations through it. Nevertheless, at the outcome of the evidentiary phase, inclusive of the hearing of several witnesses, the Judge rejected these defences, confirming the ex parte order.
The decision under review in fact pointed out that, on the one hand, the respondent could not claim that the blocking of the claimant’s software was unfair, given that it had stopped paying the agreed royalties. On the other hand, even if you wanted to speculate that blocking the software by the claimant was not determined by the non-payment of the royalties, “the reaction of the respondent should not have been the subtraction of customers and denigration of the trademark, but it should have still remained within the limits of what is permissible and, if anything, involve a request for judicial intervention in the respondent’s favour. There is in fact no doubt that all conduct engaged in by the respondent, which the claimant alleged and documented, and that the witnesses confirmed, amount to unfair competition and infringement of the “ParktoFly” trademark. Among these behaviours, the following are particularly significant: the suggestion to throw the “ParktoFly” card away and to use the “Fast Parking” website, the notification to the customer that “ParktoFly” became “Fast Parking” and the inclusion of a similar indication on the website“. “Nor“, the decision continued, “can it be argued that the facts presented are to be attributed to employees’ initiatives, since the different episodes clearly have the same matrix: the witnesses summoned by the claimant recalled almost identical episodes which happened in different car parks, which shows that employees performed instructions received from above. (…) On the other hand the management should have supervised the conduct of its employees, being in each case liable for the same in accordance with art. 2049 civil code“.
In conclusion, the Judge considered that the respondent was illegally trying to steal customers to the applicant, hijacking them to its new Fast Parking system, in order to leave the ParkToFly system (and, we add, the licence costs). The Judge then confirmed the existence of a prima facie case both as regarded unfair competition, and as to the violation of the ParktoFly trademark and customer database. Similarly, the Judge confirmed the existence of a danger in delay, stating in particular that this was not excluded by the respondent’s commitment, taken at the hearing, to cease the contested conduct: “the cessation of the behaviour spontaneously implemented only after the notification of the petition, and/or the commitment to desist from that behaviour are not sufficient to prevent the issue of the injunction order and other measures invoked as a precautionary measure“.
The order hence confirmed the injunction of the contested behaviours, also ordering the defendant to issue a press among customers to explain what happened, and to ensure the publication of the operative part of the decision in the “Il Corriere della Sera” newspaper, in a font double the normal size. The Judge also awarded the successful claimant with the court fees of more than € 11,000, which finally brings this kind of sentence to allow a real (and not just a little more than symbolic as in the past) refund of the expenses incurred, marking among other things the increasing alignment of the Milan IP Court with the practice of the most important international courts.