Substantial and procedural issues surrounding acquiescence in Italian Trademark Law: Decision no.18736/2018 of the 1st Chamber of the Court of Cassation

With the above decision, published on 13 July 2018 (and available at this link), the Court of Cassation (the Italian Supreme Court) took stock of some substantive and procedural issues concerning the so-called acquiescence. Acquiescence refers to the situation in which the owner of a prior trademark loses the […]

By |30 11 2018|Uncategorized|0 Comments|

Barilla wins long pillow fight

Early this year, a three-year long “pillow fight” engaged by Barilla came to an end with a ruling in favour of the Parma food giant (Milan IP Court, decision no. 830/2018 of 25 January 2018).*

In 2014, a small textile business, I. F., started manufacturing throw pillows reproducing the shape […]

By |05 03 2018|Uncategorized|0 Comments|

It is lawful to prohibit sales on Amazon to protect a luxury brand, the ECJ says

(The original Italian version is published on Diritto 24 – Il Sole 24 Ore)

On 6 December 2017, the EU Court of Justice (ECJ) issued the already well-known Coty Germany ruling in case C-230/16, which discussed the legitimacy of some clauses of a selective distribution contract adopted in the context […]

By |12 12 2017|Uncategorized|0 Comments|

The Milan IP Court on the advertising of class C drugs

By first instance decision of 24 July 2017 (no. 8240/17), the IP Court of Milan ruled in a dispute between the two pharmaceutical companies Bayer and DOC Generici, stating that some communications spread by the latter constituted forbidden advertising of class C drugs and hence amounted to unfair competition […]

By |07 11 2017|Uncategorized|0 Comments|

The Milan IP Court gives its view on jurisdiction over online IP infringements

In a recent order issued in preliminary (injunction) proceedings, the Milan IP Court summarised its standpoint on jurisdiction and venue for infringements of IP rights committed online.

Having been enjoined by the same court from marketing women’s bags that were found to infringe on the trademark and design rights of […]

By |09 10 2017|Uncategorized|0 Comments|

The Court of Turin on the coexistence of identical trademarks, between limitation for acquiescence and absence of infringement

On 22 April, the Turin IP Court issued an interesting judgment (no. 2256/16) on the long-term coexistence of two identical trademarks used for identical products. The Judges looked specifically at the effects of such co-existence for the purposes of the so-called “validation” of the later trademark and the infringement […]

By |03 05 2016|Uncategorized|0 Comments|

Where trademarks fail, unfair competition may succour: Nestlé protects the “Galak” Easter egg line before the IP Court of Milan (Milan IP Court, Ruling no. 7026/2015, Nestlé Italiana v W.)

The Italian branch of the renowned Swiss multinational Nestlé has successfully defended its “Galak” branded line of white chocolate products before the IP Court of Milan, with particular focus on its Easter eggs.

Following interim proceedings in which it had already obtained a preliminary injunction, Nestlé filed a lawsuit for […]

By |29 06 2015|Uncategorized|0 Comments|

Trademark licences, sell-off periods and the exhaustion doctrine (Milan IP Court, order of 30/04/2015, docket no. 13254/2015)

In the matter of trademark infringements, conflicts between a licensee’s buyer or assignee and the trademark owner are usually more complex than the archetypal litigation between the trademark holder and any alleged infringer. There is, in fact, a complicating factor, represented by the contractual relations of both parties with […]

By |07 05 2015|Uncategorized|0 Comments|

“Forum shopping” in Italian IP litigation: the Milan IP Court summarises the current judicial trend

A recent ruling of a panel of Milan IP judges offers a useful perspective on the views of Italian courts on “forum shopping” in the context of IPR infringement proceedings.

The plaintiffs in a trademark infringement and unfair competition case had chosen the Milan Court as the venue of the […]

By |02 03 2015|Uncategorized|0 Comments|

The Court of Milan grants protection to Dolce & Gabbana trademarks against their use for food

A dispute regarding trademarks with reputation recently gave the Business Court of Milan “A” the opportunity to reiterate some of the principles relating to their protection. By judgment of 13 February 2015, the Court in fact ruled on the use of the trademarks “D&G” and “Sicily” held by Dolce […]

By |18 02 2015|Uncategorized|0 Comments|

Negotiations between the parties do not entail lack of danger of irreparable harm, says a Milan IP Court

(Court of Milan, Specialized Section in Enterprise Matters, order no. 62286/14 of 11.12.2014)

A court order dismissing an interim motion on account of prolonged negotiations between the parties to the proceedings is invalid, according to a recent appeal ruling issued by the Enterprise Matters Section of the Court of Milan.

A […]

By |30 01 2015|Uncategorized|0 Comments|

Here we are – again – on WTR 1000 – The World’s Leading Trademark Professionals!

The 2015 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals was published yesterday and is available online here.

Here are the comments provided on our law-firm and the name partner Elena Martini, which, for the third consecutive year, were included in the “Firms” and in the “Individuals: […]

By |23 01 2015|Uncategorized|0 Comments|