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GATTINONI’S “TEODOSIA” DESIGN: THE COURT OF NAPLES GRANTS PROTECTION

10/08/2023

LGV Avvocati assisted Phoenix 1946, owner of the trademark and design portfolio of the well-known fashion house GATTINONI, in a dispute concerning the infringement of the “Teodosia” design by competitors Pierre Cardin and Genovese Pelletterie.

The case arose following the sale by Genovese Pelletterie of products (bags, backpacks, wallets) bearing a design similar to GATTINONI’s “Teodosia” design – already registered as a European Union design. After addressing to the Court of Naples, Phoenix first obtained a judicial description pursuant to Article 129 of the Italian Industrial Property Code and, by order of 8 August 2023, against which a complaint proceedings may be lodged within the terms of the law, also received authorisation to seize the products bearing the registered design. Specifically, the Neapolitan court held that there was infringement pursuant to Article 41 of the Italian Industrial Property Code, since the general impression created by the patterns on Pierre Cardin leather goods – distributed in Italy by Genovese Pelletterie – can be considered as equivalent, in an informed consumer, to that produced by the same products with the GATTINONI brand.
Considering therefore that both the likelihood of success (fumus boni iuris) – since there is a correspondence between the registered design “Teodosia” and the designs used by Genovese Pelletterie – and the danger in delay (periculum in mora) were present, the Parthenopean Section upheld the measure rendered inaudita altera parte, and prohibited Genovese Pelletterie and Pierre Cardin from manufacturing, importing, exporting, distributing, offering for sale, marketing and advertising products bearing the design owned by Phoenix 1946, with the additional provision for a penalty payment.

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2/08/2023

EU TRADEMARKS AND GREENWASHING

The phenomenon of greenwashing is now well known and consists of marketing strategies pursued by companies that present their business as environmentally sustainable by linking qualities that have a positive impact on the environment to their products, without scientific evidence. In order to counteract this growth, also in view of the evident increase in the number of filings of so-called green trademarks (see https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/2023_Green_EUTM_report_update_2022/2023_Green_EUTM_report_2022_update_FullR_en.pdf), the EUIPO and national trade mark offices have started to carry out a more careful assessment of the descriptiveness and deceptiveness of signs from this point of view as well. In this perspective, trademark applications such as “greenline” and “carbon green” were not considered registrable. It should also be noted that a proposal for a European Union directive has recently been approved to prohibit the use of generic environmental indications such as “environmentally friendly”, “natural”, “biodegradable”, “climate neutral” or “ecological”. This is in order to make the protection of consumers and companies investing in the green sector more effective. For details see the full text of the proposed EU Directive No. 85/2023 at the following link https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=COM%3A2023%3A0166%3AFIN

MUNICIPALITY OF VITULANO: RECOGNITION OF THE HISTORICAL AND ARTISTIC VALUE OF THE NAME “MARMO DI VITULANO”, THE ONLY ONE THAT CAN BE USED TO DESIGNATE THE PRESTIGIOUS RED MARBLE USED BY VANVITELLI IN THE ROYAL PALACE OF CASERTA

20/07/2023

LGV Avvocati assisted the Municipality of Vitulano in a case concerning its famous red marble, which has been used in the construction of very important buildings, including the Royal Palace of Caserta, the Royal Palace of Naples and the Kremlin.

It is with great satisfaction that on 26 June an important settlement agreement was reached with the Ente Parco del Taburno Camposauro, in which the parties agreed to issue the following press release: “The Ente Parco del Taburno-Camposauro, in the person of its President, and the Municipality of Vitulano, in the person of its Mayor, specify and recognise that the names ‘Vitulano marble’ or ‘Vitulano red marble’ historically identify the material used by Vanvitelli to build the Royal Palace of Caserta, even if, at that time, this material was extracted indiscriminately from quarries now located in other municipalities of the Vitulano Valley, and even today it clearly identifies and marks the marble coming from the quarries located in the valley bearing the same name“.
It should also be pointed out that the Park Authority has undertaken to use the name “Vitulano Marble” when communicating and disseminating information about the stone products obtained from all the quarries in the Vitulano Valley.
In this way, a dispute pending before the specialised section of the Court of Naples and initiated by a writ of summons from the Municipality of Vitulano, assisted by LGV Avvocati, has been settled.
With this settlement, the Municipality of Vitulano was able to reaffirm the historical and artistic value of its precious red marble, its denomination and its trademarks. In this context, LGV Avvocati also handled the registration of the “Marmi di Vitulano” and “Rosso Vitulano” certification trademarks, which are owned by the Municipality.

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4/07/2023

WORK CONTINUES ON THE EU REFORM CONCERNING THE PROTECTION OF PDO AND PGI DESIGNATIONS

As stated by MEP De Castro, rapporteur of the reform proposal, the success achieved in Parliament has created a relaxed climate for the approval and adoption of the text within the legislative process involving the European Commission, the Council of the European Union and the European Parliament. Following the Commission’s proposal, which seemed unconvincing in the eyes of the MEPs, the text was made much more articulate by the Agriculture Commission of the European Parliament, which then obtained a 95% approval vote in the assembly. Among the purposes that would guide the new legislative provisions would be a ban on the use of names such as Croatian “Prosek”, as well as Slovenian and Cypriot “aceto balsamico”. For more details, please visit the following link https://www.europarl.europa.eu/doceo/document/A-9-2023-0173_IT.html

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21/06/2023

“WHAT ART IS”: CATTELAN, A BANANA AND DUCT TAPE

According to the District Court of Miami, Maurizio Cattelan’s “Comedian” – the banana attached to the wall with grey duct tape, exhibited in 2019 at the Art Basel Miami Beach fair – does not infringe the American artist Joe Morford’s copyright. The latter had conceived the idea of taping fruit to a wall as a performance art piece back in 2000. The work is entitled “Banana and Orange” and has been shared over the years by Morford himself on various online platforms (YouTube, Facebook, etc.).
Miami’s judge, called upon by the American artist, preliminarily held that Cattelan’s work did not infringe Morford’s copyright because it was not duly proven that Cattelan could have had actual knowledge of the earlier work.
In addition, the Court pointed out that applying the “abstraction-filtration-comparison” test (already illustrated in Compulife Software Inc. v. Newman, 959 F.3 d 1303) would in any case highlight the fact that very few elements of Morford’s work – when extracted and filtered from the performance as a whole (e.g., a banana, duct tape or a simple wall cannot be granted copyright protection) – can benefit from copyright protection: copyright protection extends only to a work’s expressive elements, not to the idea that constitutes its source.
It is confirmed, once again, the importance of the distinction between the corpus mysticum (the idea) and the corpus mechanicum (its concrete realization), particularly difficult to identify when analyzing works such as those of Morford and Cattelan.