In the course of the lawsuit promoted by Fiorentina, the Court of Milan, with decision no. 3435/2024 of March 27th 2024, has declared the invalidity of the “Fiorentina.it” trademark, registered by the defendant company, ordered the transfer of the domain name Fiorentina.it to the football club, and it also found that the plaintiff’s trademarks were infringed, resulting in an injunction order.
The case
The issue started when the company owner of the news outlet and online magazine “Fiorentina.it”, referred to the website fiorentina.it and defined as the “website of the Tifosi Viola”, had registered the trademark “Fiorentina.it” and used the “Fiorentina.it” domain name to connect such website.
Fiorentina complained to have never authorized the registration of the trademark nor of the domain name, that the opposing trademark was void because of their prior “FIORENTINA” trademarks and nevertheless because it was registered in bad faith, as well as highlighting the existence of a confusion risk for the public, worsened by the reputation of the trademark owned by it.
The plaintiff then requested that the trademark “FIORENTINA.IT” of the defendant company to be declared invalid and that the domain name “fiorentina.it” be transferred in its favor. The football club also requested an inspection to verify the infringement of its trademarks, as well as acts of unfair competition, resulting in an injunction and an order to pay damages.
The decision of the Court
The Court of Milan, by the judgement under exam, found that the “Fiorentina.it” trademark of the defendant company, being subsequent to the plaintiff’s trademark, lacked the novelty requirement and declared it void, considering also that the trademarks at issue are almost identical, as the presence of the top-level domain “.it”, in the trademark of the defendant, does not have a distinctive function.
The Milan judges considered unfounded the reference of the validation, raised by the defendant – according to whom Fiorentina would have been fully aware of the existence of the “Fiorentina.it” sign as trademark, domain name and news outlet and did tolerate its use – because of the bad faith of the defendant company. As a matter of fact, art. 28 of the Italian Industrial Property Code, concerning the institution of validation, does not apply to cases where the later trademark was applied for in bad faith.
According to the interpretation of the Court of Milan, the bad faith of the defendant would have resulted by the act that the latter was undoubtedly aware of the plaintiff’s “Fiorentina” trademarks, as they are well known both in Italy and abroad and that, precisely because of the notoriety and achievement among the public of the above trademarks, there was a willingness on the part of the defendant to confuse or latch onto the soccer team’s “FIORENTINA” trademarks.
The Milan judges also stated that the plaintiff’s “Fiorentina” trademark was not weak considering its notoriety and that the “names used in the sports field, if well-known, can be registered or used as trademark only by or with the consent of the rightsholder or, according to what provided for in art. 8, third comma, c.p.i”.
Therefore, the “Fiorentina” trademark can be used or registered only by Fiorentina.
For this reason, the Court ordered the transfer of the domain name Fiorentina.it in favor of the Florentine football club.
Lastly, the Court of Milan ascertained the infringement of the trademarks “Fiorentina”, as well as acts of unfair competition from the defendant.
The decision is interesting as it reiterated the concept that names used in sports field, if well-known, cannot be used freely by others, not even by team supporters to which these names refer to and mainly if such use is made with the intention to latch onto the reputation of the trademark at issue.
Chiara Morbidi