[co-author: Robert Taeger]

Dear Readers,

We are pleased to introduce an innovation in this issue of TRADEMARK INSIGHT: In response to many suggestions, in each issue, after the usual summaries of German and European trademark case law, we will put a spotlight on trademark developments in another country in a new section (Country Focus). We are particularly pleased to start this issue with the Country Focus - Italy and would like to take this opportunity to thank our colleagues Luigi Mansani, Giovanni Ghirardi and Maria Luce Piattelli.

In addition, we will of course continue to focus on current interesting decisions from Germany and the European Union. In this issue, we have once again compiled some interesting decisions from the recent months. Of particular interest are the decisions on the infringement of a state emblem (Order of St. John’s cross), on the clarity of a position mark application (Sail), on the bad faith of an EU designation (coin-base) and on the genuine use of an opposition mark (SEVEN). In addition, we report, as always, on current case law on likelihood of confusion and distinctiveness.

We welcome your feedback and suggestions by e-mail to trademark.insight@hoganlovells.com.

We wish you a helpful reading,

Thorsten Klinger und Dr. Andreas Renck

Index

Main Part - Trademark Law in the European Union and Germany

• Distinctiveness of a multimedia mark: Super Simon (EUIPO)
• Infringement of a state emblem by Order of St. John's (EUIPO)
• Clarity and graphic representability if a position mark (EUIPO)
• Bad faith and partial res judicata of EU designation "coin-base" (GC)
• Descriptiveness of the sign "EL TOFIO - EL SABOR DE CANARIS" (EUIPO)
• Distinctiveness of a chocolate bar (EUIPO)
• Distinctiveness of a two dimensional shape representation (GC)
• Likelihood of confusion between "BERGLÄNDER' and "Bergader" (EUIPO)
• Distinctiveness of the sign "Clean ist Cool" (BPatG)
• Likelihood of confusion and reputation of "HIPP" (EUIPO)
• Distinctiveness of the sign "KŌLNER DOM" (BPatG)

Country Focus – Italy:

• Administrative invalidity/revocation for non-use proceedings finally saw the light
• Juventus in the world of NFT (Court of Rome, 20 July 2022)
• The Ferrari – Bruum saga (Supreme Court, 3 November 2022, No. 32408)
• Trademarking a slogan: do and don’ts (Supreme Court, 23 December 2022, No. 37697)

Distinctiveness of a multimedia mark: Super Simon (EUIPO)

The Board of Appeal dealt with an interesting case involving a multimedia mark, a relatively new type of trade mark which consists of a combination of image and sound, filed in audiovisual file format.

The 22-second animated clip, seeking protection for goods and services in classes 16, 33 and 41 shows a heroic cartoon-character "Super Simon" flying to a holiday destination. The video, as well as the goods and services applied for include references to the Benelux Office for Intellectual Property (BOIP), including BOIP Director General Edmond Simon (Super Simon), who left in 2019 and was replaced by Ragnar Gustafsson, and BOIP classification expert Rémy Kohlsaat, which at least insiders are likely to understand.

The EUIPO rejected the application for lack of distinctiveness, and the appeal against this decision was successful. According to the Board of Appeal, the multimedia mark is distinctive, and specifically the heroic character "Super Simon" was found to be distinctive. Contrary to the examiner’s assessment, it was not necessary to indicate the manufacturer’s identity in the clip. The motive and possible intentions of the application were also deemed irrelevant for the assessment of inherent distinctiveness.

The Board of Appeal’s reasoning manages to balance a consideration of the circumstances around the trademark application with a focus on further developing the approach to this relatively new but complex type of trademark (only 65 multimedia trade marks are currently registered).

(EUIPO BoA decision of 7.3.2023, R 1490/2022-5)

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Infringement of a state emblem by Order of St. John’s cross (EUIPO)

The EUIPO Board of Appeal (Board) decided on the question of whether the EU trade mark application shown below on the left imitates state emblems and should therefore be rejected. As a major provider of medical services in Germany, “Johanniter” refers to the Order of St. John as a protestant counterpart to the Order of Malta, which also offers medical services in Germany as “Malteser”. The EUIPO had previously assumed that the symbol shown at the bottom right was a protected state emblem of Malta, and would therefore preclude registration. Since the applicant had not submitted an authorization from the competent authority, in the examiners’ view the application had to be rejected.

The Board examined the absolute ground for refusal pursuant to Art. 7(1)(h) EUTMR, which refers to Art. 6ter of the Paris Convention, and prohibits unauthorized registration and use of trade marks which are identical with or have certain similarities to state emblems. In the present case, the application clearly contains a reproduction of the eight-pointed white cross on a red background, also known as the "Maltese cross". This cross has been registered since 1972 as the commercial flag (ensign) of the Republic of Malta under the Paris Convention as a state emblem.

The protection of "coats of arms, flags and other state emblems" under Art. 6ter of the Paris Convention serves to control the use of signs representing state authority. However, the Board finds the Application, shown below on the right, to be a mere commercial flag (ensign) of the Republic of Malta which serves to identify merchant ships and thus merely refers to the state which is entitled to fly the flag, but does not represent Maltese sovereignty. It is therefore not a state emblem within the meaning of the provision.

Furthermore, the Board finds that the Republic of Malta is in any case not a competent body to authorize the use of the registration mark. The Maltese trade flag goes back to the flag of the Order of Malta, which is considerably older than the Republic of Malta. For this reason, the Republic of Malta had to ask the Order of Malta for permission to use the sign as a trade flag. The Republic of Malta could therefore not, for its part, authorize the use of the cross element. Consequently, the Maltese flag cannot be considered a state symbol preventing the registration of the Application, and the appeal against the EUIPO’s decision was therefore successful.

(EUIPO BoA decision of 20.3.2023, R 405/2022-1)

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Clarity and graphic representability of a position mark (BPatG)

The German Federal Patent Court (BPatG) recently dealt with the distinctiveness of the trade mark application for the position mark shown below for goods and services in classes 22, 28 and 37, including ship sails, paragliders and services of a sailmaker. The German Patent and Trade Mark Office (DPMA) had previously rejected the application for lacking clarity and valid graphical representation. Position marks must clearly indicate the positioning of the sign on a precisely defined part of the goods, which is not the case here due to the following description:

"straight continuous unbroken line in the lower area parallel to the lower edge of a sail; horizontal distance from the bow edge and the stern edge of the sail, of each at least 1/10 of the luff length and max. 1/4 of the luff length; absolute length of the line less than 3/4 and greater than 1/2 of the luff length; vertical distance of the line from the luff less than 1/35 of the height of the sail or less than 1/5 of the length of the luff of the sail; vertical distance greater than 1/8 of the height of the sail or greater than 1/8 of the length of the luff of the sail, uniform line thickness in the range of 1 to 5cm".

On appeal, the BPatG confirmed the DPMA’s decision. The Application did not meet the legal requirements for clarity. Unambiguous graphical representation on the register is a substantive requirement of trademarks and not an absolute ground for refusal. If the object of protection comprises several designs, it is not a sign for which protection can be claimed with a single trade mark application, but a plurality of signs.

This was the case here. The hand-drawn illustration did not define the subject matter of protection with sufficient clarity. Even if in principle, the description might specify the object of the application where the main characteristics cannot be derived directly from the drawing without doubt, the requirements for this were not met in this case, since the description was not sufficiently precise and unambiguous either.

(BPatG, decision of 9.2.2023, 30 W (pat) 539/20)

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Bad faith and partial res judicata of the EU designation "coinbase" (GC)

In this judgment, the GC dealt with a question on the effect of partial res judicata, which arose in the context of the International Registration designating the EU, "coinbase" for goods and services in classes 9, 35, 36, 38 and 42, claimed to have been filed in bad faith. Initially, invalidity proceedings against this registration were based on likelihood of confusion and bad faith.

At first instance, the contested mark "coinbase" was declared invalid due to a likelihood of confusion with the earlier identical International Registration "COINBASE" for identical and similar goods and services. With regard to the dissimilar goods and services, the Cancellation Division did not assume that the proprietor was acting in bad faith at the time of filing the contested mark.

The invalidity applicant's appeal against this decision was unsuccessful so it brought the case before the GC arguing that the Board of Appeal had not taken into account all relevant circumstances in its overall assessment to determine bad faith. According to the applicant, only considerations relating to the dissimilar goods and services had been taken into account in the Board’s assessment. A further claim was made that identical and similar goods and services, as well as evidence submitted in that regard, had been disregarded by the Board of Appeal. The Office justified its approach by stating that the appeal had been limited to the dissimilar goods and services as a result of the final findings on the identity and similarity of the goods and services.

The GC annulled the Board’s decision and referred the case back to the EUIPO. The court agreed that the appeal does not relate to the final part of the initial decision, in which a likelihood of confusion was assumed for identical and similar goods and services. However, the Board of Appeal should also have taken into account the circumstances relating to the identical and similar goods and services in the overall assessment of the extent to which there was bad faith in relation to dissimilar goods and services. This examination must now be carried out.

(EUGC, judgment of 22.3.2023, T-366/21)

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Descriptiveness of the sign "EL TOFIO - El sabor de CANARIS" (EUIPO)

In this decision, the EUIPO addressed the distinctiveness of local language terms in an EU trade mark. The Grand Board of Appeal of the EUIPO found that there was no absolute ground for refusal of the EU figurative trade mark "EL TOFIO - El sabor de CANARIS" in relation to goat cheese from the Canary Islands (Class 29) and denied a direct link between the meaning of the Spanish word "TOFIO" and the goods applied for.

The GC had previously overturned the decision of the Fifth Board of Appeal in which it had assumed that the trade mark application was descriptive. The GC’s focused on evaluating the understanding of the average Spanish-speaking consumer of the word "TOFIO". The term "TOFIO" belongs to a language spoken only locally on the Canary Islands and is a local designation for a collecting vessel used in the extraction of goat's milk, a traditional product of the Islands. According to the GC, the Fifth Board of Appeal should not have concluded that the average Spanish-speaking consumer knew or was familiar with the word "TOFIO" and, to conclude accordingly, that the word had a sufficiently clear and immediate meaning to consider it descriptive of the product in question.

Subsequently - and after limiting the goods protected by the application to goat's cheese from the Canary Islands (class 29) - the case was referred to the Grand Board of Appeal because additional issues were raised in the context of knowledge of vocabulary and culture in the EU. The Grand Board of Appeal now found, on the basis of online sources, that the word "TOFIO" is part of a language spoken only locally. It was also not likely in the future that a substantial part of the relevant public would make a connection between the word and the claimed product within the EU. 'TOFIO' is not a generic name for a particular type of cheese, in particular goat's cheese. It was also unlikely that the traditional collecting vessel referred to would experience a renaissance against the background of the existing economic and regulatory framework. Thus, no direct link can be found between the container designated as 'TOFIO' and the characteristics of the product for which registration is sought.

(EUIPO BoA desicion of 15.2.2023, R 1083/2020-G)

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Distinctiveness of a chocolate bar (EUIPO)

The Board of Appeal recently dealt with the distinctiveness of the figurative mark shown below for chocolate goods in class 30, which had previously been rejected for lack of distinctiveness. The light spots on the chocolate bar were deemed to correspond to typical design shapes which are perceived by the public as mere decorative elements and do not serve to indicate commercial origin.

The Board of Appeal confirms the examiner’s decision, reinforcing that a sign consisting of the shape of the claimed product itself must deviate significantly from the norms and customs in the sector in order to be perceived as distinctive by the public. However, that is not the case here, since many similar shapes can be found on the market. The Board disagrees with the applicant’s claim that the public would recognize four-leaf clovers in the light-colored spots, since clovers generally have leaves of the same size and are green. The spots therefore do not represent anything tangible.

Even if chocolate bars are in fact mostly single-colored, the public is nevertheless familiar with two-colored designs, namely brown-beige designs as combinations of light and dark chocolate. Overall, the trade mark as a whole does not contain any element which provides the public with an indication of commercial origin.

(EUIPO BoA decision of 30.3.2023, R 0445/2022-1)

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Distinctiveness of a two-dimensional shape representation (GC)

In this decision, the GC dealt with a two-dimensional representation of the outline of a cylindrical container with wavy sides, applied for as an EU figurative mark for goods in class 30 (including sweets, confectionery, coffee and cocoa). The GC agreed with the Board of Appeal that the figurative mark applied for is not protectable due to lack of distinctiveness.

According to the court, consumers displaying an average level of attention would perceive the sign as a simple representation of the packaging or presentation commonly used in trade for the goods concerned, the shape of which does not depart significantly from the norm or customs of the sector.

The applicant claimed that the Board of Appeal could legitimately have based its assessment of distinctiveness on shape mark criteria (i.e. trade marks consisting of the shape of the product), since many consumers would perceive the sign as representing a container. For two-dimensional marks, that principle applies both to (photographic) graphic representations of a product in perspective and to a purely schematic representation of the product.

With its decision, the GC denied distinctiveness because the depicted container does not have any features that differ significantly from other types of packaging commonly used on the market.

(EUGC judgment of 29.3.2023, T-199/22)

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Likelihood of confusion between "BERGLÄNDER" and "Bergader" (EUIPO)

In opposition proceedings, the Board of Appeal recently dealt with the likelihood of confusion between the word mark application "BERGLÄNDER" (BERG = German for mountain; LÄNDER = German for a person/object originating from a certain area of land) seeking protection for goods including baby food, lactic ferments for medical purposes and lactose for pharmaceutical purposes in classes 5 and 30 and the earlier EU figurative mark "Bergader" (Berg = German for mountain; ader = German for vein) protected for goods including milk and dairy products in classes 29 and 30.

The EUIPO Opposition Division had initially assumed a partial likelihood of confusion, but rejected the opposition for the remaining goods. Both sides filed an appeal against this decision.

The Board of Appeal now confirmed that, from the point of view of Spanish and Greek consumers, who do not attribute any meaning to the identical word element "Berg", the signs are highly similar both visually and phonetically. It was irrelevant whether German consumers, for example, could perceive the word element "Berg" as descriptive. The focus of the decision was on the comparison of goods.

In the Board of Appeal's view, there was also a similarity between the goods again contested in the cross-appeal, namely cream stiffeners (class 30), because they are used with milk and milk products. There is also a similarity of goods between baby food, nutritional flour with added milk and infant formulae (class 5) on the one hand and milk and milk products (class 29) on the other, since these goods can be used interchangeably or together with each other, are offered on adjacent sales shelves and are partly produced by the same manufacturers.

By contrast, the Board of Appeal found that there was no similarity between, on the one hand, lactic ferments for medical purposes and lactose for pharmaceutical purposes and, on the other, the goods in classes 29 and 30 protected by the earlier mark. According to the applicant, the former goods in class 5 are pharmaceutical or medical preparations which are not aimed at the general public, are sold in pharmacies and are produced by different manufacturers.

The appeal filed by the applicant was dismissed and the cross-appeal filed by the opponent was partially upheld within the framework set out above on the ground that there is also a likelihood of confusion in this respect.

(EUIPO BoA decision of 24.3.2023, R 511/2022-1)

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Distinctiveness of the sign "Clean ist Cool" (BPatG)

The German Federal Patent Court (BPatG) recently dealt with the distinctiveness of the word mark "Clean ist Cool" (German for clean is cool) applied for at the German Patent and Trade Mark Office (DPMA) by the addiction counseling center CliC Deutschland Landesverband NORDOST e.V. for services in classes 41, 44 and 45, including social pedagogical counseling services and addiction counseling. The DPMA previously rejected the application for lack of distinctiveness.

The BPatG confirms the DPMA’s decision: The slogan-like word sequence "Clean ist Cool" is understood to mean that it is excellent to have overcome addiction. The public will therefore perceive the mark as an advertising promotion for the goal of overcoming addiction. The mark applied for does not have any additional, original meaning. The positive idea of addiction self-help conveyed by the sign also does not establish distinctive character under trade mark law. As a result, the sign is merely perceived as an indication of the subject and purpose of the services claimed, but not as an indication of commercial origin.

(BPatG, decision of 16.2.2023, 30 W (pat) 75/21)

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Likelihood of confusion and reputation of "HIPP" (EUIPO)

The applicant sought to register the figurative mark "HIPPO LAND" for a large number of goods and services in classes 16, 28 and 35. The opposition directed against the application was based on earlier EU and German "HIPP"-trade marks (figurative and word), which protect goods and services in classes 5, 16, 28, 29, 30, 31 and 32.

The Board of Appeal (Board) confirms the decision of the Opposition Division that there is a likelihood of confusion between the signs insofar as identical and similar goods or services are concerned. In the application, the stylised word "HIPPO" as well as the image of the hippopotamus would dominate, which would compare with the decorated word element "HIPP" of the earlier mark. From the point of view of the relevant public, whose level of attention is average to above average, there is an average visual and phonetic similarity between the signs. This is not diminished by the fact that some consumers could understand the term 'HIPPO' in the sense of hippopotamus. At least for a large part of the relevant public, the words 'HIPPO' and 'HIPP' have no meaning.

The Board also found reputation had been proven according to Article 8(5) EUTMR insofar as the opposition was directed against dissimilar services in class 35. The owner of the "HIPP" trade marks had submitted, among other things, several surveys, press reports, market research results, information on market shares, a declaration of a local chamber of commerce, copies of invoices as well as screenshots of websites with product offers as evidence of their reputation. The Board confirmed that the "HIPP" trade marks enjoy a high degree of recognition in Germany with regard to baby food and that there exists a link between the marks, as the contested retail services may relate in particular to baby products.

(EUIPO BoA decision of 8.3.2023, R 833/2022-5)

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Distinctiveness of the sign "KÖLNER DOM" (BPatG)

The German Federal Patent Court (BPatG) recently dealt with the distinctiveness of the trade mark application "KÖLNER DOM" (Cologne Cathedral) for goods and services in classes 14, 16, 25 and 35. The German Patent and Trade Mark Office (DPMA) had partially rejected the application for lack of distinctiveness, since the sign applied for was limited to the designation of an outstanding landmark, in the vicinity of which souvenirs were regularly offered.

The applicant relies on the reasoning of the CJEU’s Neuschwanstein decision from 2012. This decision confirms, according to the applicant, that the name of a building is registrable as a trade mark if its main function is not the production or provision of the goods and services claimed, but the preservation of a cultural heritage.

The BPatG rejected the appeal because the sign lacks distinctive character, and not just because it was the designation of an important cultural asset. With regard to the goods that are modeled on the building or can be decorated accordingly, the sign is also found to indicate a mere thematic reference.

Finally, Neuschwanstein is not applicable to this case. The question of distinctive character in that decision concerns the question whether the place of sale is a circumstance that is closely connected with the respective goods or services. Contrary to that, the present case deals with whether the name serves in trade to designate the geographical origin and thus has a descriptive effect.

The appeal on points of law to the German Federal Court of Justice (BGH) was admitted.

(BPatG, decision of 19.1.2023, 25 W (pat) 526/21)

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Country Focus - Italy

Administrative invalidity/revocation for non-use proceedings finally saw the light: an opportunity for trademarks owners!

Following the publication in the Italian Official Gazette of the Decree No. 180 of 19 July 2022 (which amends the Italian IP Property Code), since 29 December 2022 it is possible to file trademark invalidity and revocation proceedings before the Italian Patent and Trademark Office ("IPTO").

The Decree is the last step carried out by Italy to comply with the Trademark Directive (EU) No. 2015/2436. Indeed, before 29 December 2022 any right holder was forced to bring a full-fledged ordinary trademark invalidity or revocation for non-use proceedings in court (which was more complex and time consuming).

The new IPTO proceedings (similar to those already adopted in 2011 for oppositions) is quicker and cost-effective. In particular, right holders can now seek trademark invalidity on absolute grounds or on relative grounds (in the case of an earlier trademark application or registration – N.B. unregistered trademarks cannot be considered as a relative ground for action). Revocation for non-use can be sought against Italian trademarks (or International trademarks designating Italy) registered for more than 5 years.

The right holder must file an application before the IPTO setting out (i) its earlier rights, if any; (ii) the details of the contested trademark; (iii) the infringing goods/services; and (iii) an explanation of the grounds supporting its objection (as well any supporting documents).

If the application is deemed admissible, the IPTO notifies the parties and sets out an initial deadline of 2 months (jointly extendable for up to 1 year) to negotiate an agreement. If no agreement is found, the owner of the contested trade mark is given 60 days to file observations and, where applicable, to file a request for proof of use of the earlier mark. The IPTO may assign to the right holder a deadline to reply. Afterwards (and within the deadline of 24 months), a decision should be issued.

The new proceedings provide an opportunity for right holders to enforce their trademark rights more effectively in Italy, also bearing in mind that it is always possible to bring ordinary proceedings in Court (so called “dual track”).

In terms of trademark enforcement strategies, Court actions would be suitable for complex trademark cases (where the right holder has an interest to raise multiple claims, such as invalidity, infringement or unfair competition).In Italy such claims can in fact be combined in a unique proceedings. The administrative invalidity/revocation for non-use proceedings could be devoted to simpler and more standard cases. Moving forward, the dual track system would thus allow trademark holders to adjust their trademark strategies based on their needs, goals (and budgets), and will certainly play a role to devise the most effective course of action to preserve the value of a certain brand in Italy.

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Juventus in the world of NFT (Court of Rome order 20 July 2022)

In 2022, Juventus Football Club S.p.A. ("Juventus"), one of most important Italian professional football clubs, brought urgent proceedings before the Court of Rome, seeking a preliminary injunction against Blockeras S.r.l. (“Blockeras”), a company operating in the crypto currency market and producing NFTs.

Blockeras had launched a series of trading cards in NFT format dedicated to football players, including some cards depicting a former well-known Juventus player (Christian “Bobo” Vieri) with the Juventus black and white stripe uniform. While Vieri appears to have authorised Blockeras to use his image, Juventus however, had not given its consent.

Juventus decided to act on the grounds of its word and figurative marks, including the famous “JUVENTUS” and “JUVE” trademarks and the figurative trademark consisting of a black and white vertical striped jersey with two stars on the chest. In particular, Juventus argued that the offer for sale of the NFTs infringed the rights vested in its trademark, creating a likelihood of confusion, since the targeted public would have wrongly assumed that the NFT originated from Juventus or that an economic relationship existed between Juventus and Blockeras.

Blockeras asked the Court of Rome to dismiss the case, arguing, among others, that Juventus did not file its trademarks expressly for NFTs goods.

The Court of Rome sided with Juventus and granted the preliminary injunction. The Judge noted that: (i) Juventus was one of the most famous football teams in Italy and abroad; (ii) Juventus does license its trademarks for different purposes (i.e. to sell clothing, toys, accessories and the like); (iii) Juventus owned various marks claiming protection also in class 9 (for “digital downloadable publications”) and was able to show that they offered for sale “videogames based on blockchain technologies”. The Court also stated that the fact that Bobo Vieri consented to the use of his image was not relevant in the trademark infringement assessment. Overall, the Judge concluded that Juventus was entitled to seek urgent relief (noting also that Mr. Vieri and Blockeras had executed a license agreement until 2024, potentially to the detriment of Juventus) and prohibited Blockeras from use of Juventus’ trademarks.

The order of the Court of Rome – while issued in the context of preliminary injunction proceedings – is notable, being one of the first decisions issued in Europe in relation to trade mark rights and NFTs. It is also interesting to see that the Court broadly interpreted the scope of protection of Juventus’ trademark rights in class 9 and has given weight to the existence of license agreements executed by Juventus with third parties. The case may thus provide some guidance on the position which Italian Courts may take vis-à-vis the use of NFT in the future, especially when well-known trademarks are at stake. Having said that, the order also highlights the importance of right holders securing specific protection for NFT goods in class 9 (in order to minimize the risks that infringers try to raise defences similar to those exploited by Blockeras). In this case, the reputation of Juventus and the widespread use of its marks, including in class 9, was relevant to assess infringement, but does not mean that this will be the outcome in all cases.

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The Ferrari – Bruum saga (decision of the Supreme Court 3 November 2022, No. 32408)

The Italian Supreme Court has definitively ended a longstanding dispute of more than 20 years between the famous Italian luxury sport car manufacturer Ferrari S.p.A. (“Ferrari”) and Bruum S.n.c. (“Bruum”), a company which manufactures miniature models of vintage cars, including Ferraris.

In 2000 Ferrari brought ordinary proceedings against Bruum, claiming that the manufacture and offer for sale of its scale models infringed, among others, Ferrari’s exclusive rights in the famous trademark depicting the “Cavallino Rampante”, a prancing black horse on a yellow background. Bruum defended its position, stating that it had been manufacturing such products since 1972 and that no infringement of Ferrari trademarks had occurred, considering that the models were perfectly identical scale reproductions of the famous Ferrari cars. According to Bruum, the presence of the Cavallino Rampante was necessary to correctly depict the car in its relevant features.

Both the Court of Modena, in the first instance, and the Court of Appeal of Bologna, agreed with Bruum’s position, finding that its activities were lawful.

Ferrari decided to escalate the dispute up to the Italian Supreme Court, requesting reversal of the previous judgements on the grounds that they were based on a wrong interpretation of the general principles of trademark law protecting well-known marks.

In particular, Ferrari argued that the Court of Appeal of Bologna based its decision on incorrect interpretation of the landmark decision issued by the Court of Justice of the European Union (“CJEU”) in Opel vs. Autec case(C-48/05), in which the CJEU concluded that:

“where a trade mark is registered both for motor vehicles — in respect of which it is well known — and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models constitute […] a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys or […] a use which the proprietor of the trade mark is entitled to prevent if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles”. CJEU also noted that “where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale model”, being “merely an element in the faithful reproduction of the original vehicles”.

Ferrari countered that the CJEU’s decision focused only on the basic function attributed to a trademark, i.e. the fact that the mark should guarantee a certain origin. However, according to Ferrari, the CJEU failed to consider other relevant elements, such as the “evocative function” and the “promotional function” of the mark. Ferrari stated that Bruum’s models diluted the value of its famous marks, and that the actual ways in which Bruum’s cars were presented to the public infringed its rights. Among others, Ferrari remarked that the “BRUUM” mark was visible only on the outside packaging of the toys. Once the models are removed from the packaging, however, only Ferrari’s marks were visible, thus creating confusion for the consumer as to the origin of the product.

The Supreme Court disagreed with Ferrari’s arguments. The Judges preliminary highlighted that the principles established by CJEU were correct and that the Court of Appeal of Bologna fully applied them to resolve the dispute. In particular, the Supreme Court emphasized that, in order to determine whether the reproduction of a certain trademark on a scale model toy is lawful, it is necessary to assess whether such reproduction entails a tarnishment of the rights of the trademark owner. Such assessment shall be carried out on a case by case basis.

In the case involving BRUUM, the Supreme Court concluded that the lower Courts, and in particular the Court of Appeal, correctly applied CJEU’s principles, having considered the following elements (i) that BRUUM’s models were perfect reproductions of Ferrari’s old cars; (ii) that various vintage ”BRUUM” models were exhibited in the Ferrari’s museum; (iii) that the “BRUUM” products were described and reviewed on magazines such as “Ferrari World”. Therefore, there was no possibility for the Italian public to wrongly establish a connection with Ferrari and, in any case, the concrete way in which the products were presented avoided any confusion/link in the mind of the consumers.

The decision issued by the Supreme Court is interesting for a number of reasons. First, it shows how the EU case-law is concretely interpreted and applied in Italy either by the Courts on the merits and by the Supreme Court. Moreover, the case submitted to the Supreme Court deals with the tricky issue of whether and under which conditions the use of a trademark in a non-distinctive fashion is allowed. It is also interesting that the Court has devoted efforts to thoroughly explain why the lower Courts were right (which does not always happen as the Supreme Court is only required to assess whether any principles of law have been correctly applied).

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Trademarking a slogan: do and don’ts (decision of the Supreme Court 23 December 2022, No. 37697)

Hulka S.r.l. (“Hulka”), a company operating in the cosmetic and pharmaceutical field, filed the trademark application “LA TUA PELLE MERITA DI ESSERE TRATTATA BENE” (in English “Your skin deserves to be treated well”) before the Italian Patent and Trademark Office (“IPTO”). The IPTO refused the the trademark on absolute grounds, considering it devoid of sufficient distinctive character. Hulka appealed before the IPTO Board of Appeal, claiming that the grounds of the IPTO’s decision were incorrect.

The Board of Appeal, however, upheld the refusal, pointing out that the sign was to be considered as a “slogan”, specifying that a slogan can be registered as a trademark if it has inherent distinctive character, and it is not simply composed by expressions commonly used in the relevant sector. The Board of Appeal emphasised that this approach was consistent with EU-case law on the protection of slogans.

Hulka appealed before the Supreme Court, claiming that the expression “LA TUA PELLE MERITA DI ESSERE TRATTATA BENE” could not be considered as lacking of distinctive character, being sufficiently original. Hulka remarked that the Board of Appeal wrongly made “an evaluation of the single words” which composed the slogan and [had] not considered the trademark “in its entirety”.

The Supreme Court disagreed with Hulka’s findings. The Judges stated that – albeit concise – the assessment carried out by the Board of Appeal (and by IPTO) was correct, as the Board clearly indicated that the slogan adopted by Hulka was not capable of providing any unequivocal information as to the source of the products, being generic/descriptive in the cosmetic field. In other words, the slogan did not include any arbitrary element capable of making the trademark sufficiently distinctive.

The Supreme Court referred to principles established by CJEU when assessing the inherent distinctiveness of slogans and highlighted that, while the registration of a slogan is not per se precluded, the slogan should be original and act as an indicator of origin, which was not the case in Hulka’s application.

The decision is interesting as it deals with one of those (relatively rare) cases in which the IPTO issues a trademark refusal on absolute grounds. Indeed, the IPTO is generally quite flexible in the assessment of inherent registrability of distinctive signs. Having said that, the position expressed by the IPTO and the Board of Appeal (as definitively confirmed by the Supreme Court) is consistent with EU case-law and should be taken as a relevant precedent in the overall assessment of weak trademarks in Italy.

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Disclaimer: Please note that the decisions included in this newsletter are a subjective selection of relevant trademark decisions made by the authors without any claim to completeness.