trademark @en

“Pinocchio” is a valid Community trademark – and it’s not a lie

With its decision on 25 February 2015 in Case R 1856/2013-2 Yves Fostier v. Disney Enterprises, Inc., partially allowing an appeal, the Second Board of Appeal of OHIM (Office for Harmonization in the Internal Market) confirmed the validity of the word “PINOCCHIO” as a Community trademark (CTM).

In 2009, Disney […]

The Italian Supreme Court on the use of a surname as a trademark: Alessi vs. Exclusive di Giacinto Alessi

(An Italian version of this post is published on Diritto 24 – Il Sole 24 Ore)

By judgment no. 3806/15, published a few days ago, the Italian Supreme Court ruled on the infringement of an earlier registered trademark by a company name and corresponding unregistered trademark containing a surname identical […]

Prior use defence: Rino Gaetano’s cover band can keep the name “Ciao Rino”, says the Italian court of Cassation

With ruling no. 2671, published on 11 February 2015, the Italian Court of Cassation rejected the appeal brought by the sister of the famous Italian songwriter Rino Gaetano against a decision of the Rome Court of Appeal granting the frontman of a cover band the right to use the […]

Cuba, Rum and Geographical Indications

It is not uncommon in cases relating to trademarks and similar rights for history to be discussed, and the Specialized Section in Enterprise Matters of the Milan Court happened to deal with the recent history of Cuba, along with one of its typical products: rum.

Havana Club International, the well-known […]

AdWords and third party trademarks: the Enterprise Matters Section of the Milan Court rules in the wake of the ECJ’s case-law

The use of third party trademarks as “ad-words” in order to gain advantageous referencing in Internet searches does not necessarily constitute trademark infringement, the Enterprises Section of the Milan Court ruled on appeal against a summary judgment, in a decision that is filled with references to the EU Court […]

The CJEU on the cross-class protection of the trademark “Ballon d’Or”

Written with Michele Papa

By decision of 20 November in joined cases C-581/13 P and C-582/13 P, the Court of Justice of the European Union (“CJEU”) ruled on the cross-class protection of well-known trademarks in relation to Intra-press’ sign “Ballon d’Or”, i.e. the name of the famous football award that […]

Distinctive Packaging, Unfair Competition and Damages: a Milan IP Court Ruling

The IP Court of Milan recently issued a ruling of some interest in the matter of distinctive packaging, unfair competition and related damages claims (ruling no. 11010/14 of 17/09/2014).
A primary Italian player in the potato chips market had filed a lawsuit against a direct competitor, claiming that the latter […]

The protection of shape trademarks: Ferrero obtains a partial victory before the Milan IP Court

An IP Judge of the Milan District Court partially granted an application for preliminary seizure and injunction filed by the well-known confectionery company Ferrero against one of its competitors, which claimed, among other things, an infringement of shape trademarks (Order of 08.11.2014, Docket No. 19325/2014, Judge S. Giani).
Ferrero had […]

Apple’s retail store layouts and trademark protection: a recent decision by the CJEU

(Written in collaboration with Silvia Laitila)

The Court of Justice of the European Union (the “CJEU”) recently ruled that the representation of the layout of a retail store may, under certain conditions, be registered as a trademark (judgment of 10 July 2014, Case C‑421/13). The request for a preliminary ruling, […]

Parallel importation of medical devices: necessary repackaging vs “opportunistic” repackaging

A permanent legal conflict is ongoing in the European Union between manufacturers and parallel importers of medical devices, in which single battles are won or lost at the crossroad between trademark protection and freedom of trade in the internal market. The scarce Italian case-law on the matter is entirely produced […]

Martini Manna accredited with S.I.A.C. – the Guardia di Finanza’s Anti-Counterfeiting Information System

Martini Manna has been accredited with the S.I.A.C., the online Anti-Counterfeiting Information System of the Guardia di Finanza (the Italian Tax & Customs police force). Through the dedicated online portal, Martini Manna can now submit information on its customers’ products and trademarks for the attention of the Guardia di […]

The Brescia IP court on descriptive fair use of trademarks and “late reaction”

The Brescia IP court recently issued two interim decisions on descriptive fair use of a trademark by the reseller of genuine goods.

The parties in the preliminary proceedings (and in the subsequent preliminary appeal proceedings) were Montblanc Italia and one of the companies of the Giustacchini group, reselling office products […]