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05 April 2017

CLINIQUE: reputation alone may not cure trademark's inherent weakness

In a recently published decision the Court of Cassation held that although the trademark CLINIQUE was well known in the European Union, its reputation was insufficient to overcome the weakness of the trademark and its inherent lack of distinctiveness.

09 November 2016

The double identity of OSCAR: a trademark and a common term

The Supreme Court recently held that the trademark OSCAR was valid with respect to the film industry and thus gave its owner, the Academy of Motion Picture Arts and Sciences, exclusive rights in its use. However, the court also held that the trademark had become a common name in relation to other services – namely, teaching and performances in Class 41 of the Nice Classification.

13 July 2016

Court of Milan considers claims of nullity and partial nullity against same mark

A Court of Milan decision ordered the partial nullity of a trademark, permitting the continued registration of the remainder of the mark. Although trademark litigation may not always be pretty, it might just save at least part of your trademark.

13 April 2016

Court rules stylised cowhide symbol can be freely used for leather goods

The Court of Milan has confirmed its partial previous decision declaring the nullity of the Italian collective mark consisting of a symbol portraying stylised animal skin. The mark was well known in Italy as 'vacchetta' ('cowhide') and was registered in Classes 16, 18, 21, 25 and 28, claiming goods made of leather in each class.

13 January 2016

Appeal board confirms similarity of hairdressing products and services

In a recently published decision the Italian Board of Appeal confirmed that even if products and services are, by their nature, different, “hygienic and beauty care treatments to human beings and animals” in Class 44 with respect of “hair care products” in Class 3 can be found to be similar, taking into account all the relevant factors.

02 December 2015

Wine and oil do not mix – except in trademark rulings

The Court of Cassation recently upheld a Milan Court of Appeal decision holding that, with respect to trademarks, wine and oil are similar goods. The decision is in line with past Italian jurisprudence, yet is inconsistent with both Office for Harmonisation in the Internal Market case law and the position of the Italian Trademark Office, which considers goods in Classes 29 and 33 to be dissimilar.

22 July 2015

Is a trademark consisting of two complex Chinese characters inherently distinctive?

A recent Italian Patent and Trademark Office decision to register a trademark consisting of two complex Chinese characters was based on the distinctiveness of two Chinese characters. However, this distinctiveness is questionable.

10 June 2015

Revenge of the Pink Panther: stuffed animal toys can infringe 2D trademark

The Criminal Division of the Court of Cassation recently ruled in Metro-Goldwin-Mayer v Iervolino, holding that a three-dimensional reproduction of a two-dimensional trademark constituted trademark infringement. The ruling is expected to harmonise earlier conflicting decisions on this issue.

08 April 2015

Weak marks grown stronger: DIVANI & DIVANI trumps DIVINI & DIVANI

The Supreme Court recently ruled on the issue of secondary meaning. The judgment may lead to further developments on two key issues: the extent of the protection of weak signs, and the application of secondary meaning as a remedy to strengthen the distinctive character of such signs.

10 December 2014

Registered designs can now include slogans

A recent decision of the Italian Board of Appeal confirms that designs, including slogans, may be registered as ornamental models. The board explained that within the context of a design, slogans cannot be registered as such, but only as part of the particular graphic used by the slogan. This decision aligns Italian Patent and Trademark Office practice with that of the Office for Harmonisation in the Internal Market.

19 November 2014

A rose by any other name does not necessarily cause confusion

In Viparis the Board of Appeal determined that when two trademarks include figurative elements and the earlier trademark also includes a distinctive verbal element, the two trademarks must be compared as a whole, without a separate analytical comparison of each of their components.

23 July 2014

The deer makes the difference: autonomous protection for each part of composite mark

In a recently published decision the Supreme Court ruled that for a composite mark consisting of two autonomously distinctive elements, the imitation of one element amounts to an imitation of the trademark as a whole. The court recognised the risk of confusion between the composite marks of appellant Mast Jägermeister AG and appellee Zwack Unicum.

02 April 2014

How strong is a fortress? Inconsistency over confusing similarity between trademarks

A recent Opposition Division decision held that the trademarks FORTEZZA (meaning 'fortress') and FORTENZA were not confusingly similar. The decision is inconsistent with other decisions in similar cases and confirms that the newly introduced opposition proceedings in Italy still come with the risk of highly unpredictable results.

08 January 2014

San Daniele: Italy fights for its ham

In a case involving the United Kingdom, Italy has confirmed that it will fight strenuously at the EU level in order to protect its geographical indication against infringements, particularly in the strategic food sector. Italian institutions are quite aggressive in protecting the sector against counterfeiting and infringement.

06 November 2013

It’s a family affair: FAMILYMART and FAMILY MART marks held "conceptually dissimilar"

The Opposition Division of the Italian Patent and Trademark Office has ruled that, although graphically and phonetically similar, the trademarks FAMILYMART and FAMILY MART were "conceptually dissimilar”. Nevertheless, the opponent succeeded as the trademarks were determined to be confusingly similar. However, the Opposition Division's conceptual analysis remains somewhat questionable.