THE “BETTY BOOP” JUDGEMENT OBTAINED BY LGV IS SUPPORTED BY LEGAL COMMENTS

30/08/2016

On the third volume of the Italian legal periodical “Rivista di diritto industriale”, the first comment on the historic judgement held by the Court of Bari on February 22, 2016 (whereof it has already given notice on LGV’s website – https://www.lgvavvocati.it/en/news/page/3/) appeared. The comment supports the position taken by LGV in the proceedings, and essentially embraced by the Court, according to which the attempt to perpetuate the monopoly on the character of Betty Boop through the trademark protection must be rejected when the copyright on that character has expired (Court of Bari, February 22, 2016, in “Rivista di diritto industriale”, p. 293, with comment of Bixio, “Long live Betty Boop, the extra-protection of the fictional character”).
 

 
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In a previous news of our website we talked about the historic decision of the Court of Bari in the “Betty Boop” case, where LGV defended the US company Avela, active in the field of posters and merchandising of fictional characters, supporting the thesis according to which – once a fictional character enters the public domain – a trademark covering the same character could not prevent the use of the character in other graphic representations, not having trademark function. The Journal of Industrial Law recently published a case note to the decision of the Court of Bari, which supports the correctness of the judgement in question, expressly affirming that “the line held by the Court of Bari it is more than appreciated where it wants to ward off the attempt to create upon the famous character of Betty Boop a revival of broader and longer-lasting rights than copyright’s ones”. The comment also points out – correctly – that an attempt of this kind is increasingly common, even in terms of prolongation of the duration of the protection and/or extension of the right’s object. Instead, it clearly arises from the comment on the decision of the Court of Bari, as well as from the previous case-law regarding the fictional character, the need to avoid any deceptive use of industrial and intellectual property tools (in this case the trademark), in a pro-competition perspective which is typical of the field of industrial and intellectual property. In fact, it should not be forgotten that such monopolies are born and live in accordance with their pro-competition effects, and more generally for the creation of values for a company as a whole: as a consequence, any use of the tools of industrial and intellectual property aiming – “extra legem” – at an undue extension of the protection shall be avoided (and considered out of the system), in order to prevent such an use from turning into an ultra-monopolistic defense in favor of people – already holders of an economically dominant position – who can perpetuate this position only by virtue of the economic investments that they are able to make, without having to actually perform any creative or innovative activity. The system of intellectual and industrial property, instead, never protects the investment “per se”, but only if it is aimed at creating a value (differently qualified by law as creative, original, distinctive, etc.). This is the strength and the function of the institutes analyzed herein, which must be defended by the operators, in order to avoid a drift of the institutes that could lead to their delegitimization and therefore – ultimately – to a boomerang effect for all the owners of rights of this kind.


ONE FAMOUS PERFUMED TREE. THE COURT OF MILAN IS CALLED TO DECIDE ON THE PROTECTION OF REGISTERED TRADEMARKS AND COMPETITION.

28/07/2016

The Court of Milan, with judgment published on May 11, 2016, found in favour of the action for invalidity of the trademark “Forest Fresh” as well as that of unfair competition advanced by Julius Samann Ltd and Tavola S.p.A., two companies each of which owns intellectual property rights and is exclusive licensee in Italy of the marks “JSL” which are represented by the particular stylized form of the conifer tree “Arbre Magique”. The actions were taken against the Polish company Siscar Spolka z o.o. Spolka Komandytowa which marketed products bearing the mark “Forest Fresh” thus infringing the above mentioned “JSL” marks.


 

The claimants sought to protect national, European and international marks constituted by the stylized form of the conifer tree, subsequently used for tree-shaped deodorants. In particular, the claimants argued that the international mark “Forest Fresh” owned by the Polish company Siscar Spólka z o.o. Spólka Komandytowa – a sign consisting of a stylized tree, at the centre of which the denominative element “Forest Fresh” appears so as to distinguish a line of products that are identical to those on which the claimants use their mark (car deodorants) – would be invalid and indeed constitute infringement of the mark owned by the claimants. It would also amount to conduct of unfair competition due to slavish imitation (of the retail packaging and of the colours used in association with identical fragrances) as well as misappropriation.

The Court of Milan held that the marks in question would cause confusion, in light of the highly distinctive character of the JSL marks and of the intrinsic characteristics of the signs (considering that the shape of the stylized tree far outweighs the denominative component of the mark and is also entirely fanciful, as it does not describe in any way the fragrance of deodorants presently under scrutiny) as well as of the reputation enjoyed among the consuming public.

The Judges in Milan thus found an infringement of the JSL marks on part of the “Forest Fresh” mark, which they held invalid. The Court also decided that the conduct of the defendant company amounted to unfair competition due to slavish imitation, as resulting from the risk of confusion between the signs, and misappropriation, seeing as the defendant presented products in the same way and made use of identical distribution channels (exhibiting them in motorway recreational shops, gas stations, shops selling housing items and supermarkets) via packaging that was also completely identical, for the sole purpose of “riding on the coattails” of the competitor. Finally, the Court also held that art. 2598, n.3, of the Civil Code, was applicable to the case at hand.


REPARATION CLAUSE AND PROTECTION OF REGISTERED TRADEMARKS. THE COURT OF TURIN FOLLOWS THE CASE LAW OF THE COURT OF JUSTICE OF THE EUROPEAN UNION.

21/07/2016

With order dated May 23, 2016, the Court of Turin granted the precautionary protective measures for stopping production and sale, as well as conceding the seizure and withdrawal from commerce of wheel covers for automobiles manufactured by the company Wheeltrims S.r.l.. The wheels reproduced registered marks belonging to Volkswagen AG, Seat S.A. and Skoda Auto.


 

The decision adheres to the principle stated by the Court of Justice of the European Union in a judgment dated October 6, 2015, (C-500/14) and referred to a preliminary ruling submitted by the Court of Turin in proceedings involving Wheeltrims S.r.l.. According to the Court of Justice, the commercialization of spare parts, allowed within European territory pursuant to the reparation clause, does not, however, authorize the producers of the part in infringing the norms protecting registered trademarks.

The Piedmontese Court stated that the spare parts dealer may use the third party registered trademarks only and exclusively for the purpose of indicating the destination of the product or service, or with a view to indicating the compatibility of the dealer’s own spare part with a given automobile model. The use of registered signs is, however, inhibited when affixing the mark may result in confusion as to the origin of the product, preventing the consumer from distinguishing between the original product and that of the dealer.

The Court has reaffirmed the greater interest in protecting rights of industrial property as well as those predisposed for market transparency, so that the consumer may always ascertain the origin of the goods and the entity that has produced them.


A “BOW” OF TENDENCY. THE COURT OF MILAN IS CALLED ON TO DECIDE PROTECTION.

15/07/2016

The Court of Milan, with order dated 22 April 2016, granted the precautionary protective measures requested by the Italian branch of the Ports Group, a company that operates worldwide in the field of clothing and fashion accessories. The measures were directed against the Spanish company Fashion Retail S.A. as well as the Italian corporation Stradivarius Italia S.r.l. for marketing in their stores and on the website stradivarius.com a particular shoe characterized by a “bow/knot on the upper shoe” identical to the one created and marketed by Ports Italy.


 

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The applicant had based this precautionary action on certain acts of unfair competition allegedly carried out by the counterparties – that is, slavish imitation and misappropriation of attributes – requesting the opposing party to be inhibited from the continuation of the illegal conducts. Specifically, Ports Italy claimed that its shoes were characterized by the particular shape of a “bow/knot on the upper shoe”, so peculiar to allow the average consumer to connect such a shape (exclusively) to the applicant’s production. Moreover, given the reputation acquired on the market by the shoes with “bow/knot on the upper” after only 4 months from their entry into the market, the defendants would have slavishly imitated the characterizing form just in order to exploit the reputation of the applicant appropriating the advantages related to its production.

The Court held that the peculiar form of the shoes with a “bow/knot on the upper” was indeed a characterizing element of the applicant’s production, considering it to have that unique quality established by Article 2598, no. 1, of the Civil Code. Moreover, given the substantial identity between the products of the two companies, the confusing effect that the rule in question aims to avoid would have certainly taken place. However, according to the Court, the misappropriation of attributes under Article 2598, no. 2, of the Civil Code did not occur, since the reproduction of the most peculiar elements of the other party’s products would lead the consumer into error as to the origin of the goods, and hence would not be intended to take possession of the strengths of others, as required by the rule at issue.


SIMONA LAVAGNINI AMONG THE AUTHORS OF “THE DIGITAL SINGLE MARKET COPYRIGHT. INTERNET AND COPYRIGHT LAW IN THE EUROPEAN PERSPECTIVE”

07/07/2016

The last monographic volume of the series “Law and Policy of New Media” has been published. The volume, supervised by Mr. Mario Franzosi, Mr. Oreste Pollicino and Mr. Gianluca Campus, collates the documents of the Seminar organized in November 2015 by the Permanent Judicial Organization in collaboration with AIPPI. The work studies in depth the issues concerning circulation of digital contents within European territories, in light of the most recent technical and legislative innovations.


Ms. Simona Lavagnini has contributed by redacting the chapter titled “The Directive 2014/26/EU on collecting societies and the user’s perspective”, critically analyzing the points concerning the monopoly of which collecting societies de facto benefit from in individual European states. Specific attention is given to the user’s perspective, who is forced to negotiate with a single entity.

Ms. Simona Lavagnini has considered various possible solutions at a European level, such as to guarantee the right balance between the positions of the individuals involved. Ms. Lavagnini’s work examines the tendency to extend the application of competition rules to collecting societies, as well as the option of applying stringent norms with a view to imposing greater transparency for the protection of users and of the public interest.