New judgement for the trademark “Buddha Bar”: the invalidity of the trademark cannot be established ex officio

Another judgement has been pronounced for the “Buddha Bar” trademark.

As some may remember, the famous trademark has already been the subject of a proceeding before the Court and the Court of Appeal of Milan, ended with the judgement n. 1277/2016 by the Court of Cassation, which confirmed the invalidity in Italy of the trademark in question, as well as the trademark “Buddha Café”, due to the lack of distinctiveness and contrariety to public policy, as they offend the Buddhist religious sentiment.

The new matter arises from a trial before the Court and the Court of Appeal of Florence, ended with the recent judgement by the Court of Cassation n. 4771 of 28 February 2018.

In particular, in 2011 the Court of Florence pronounced the judgement rejecting the claim of negative assessment of counterfeiting and compensation for damages proposed by the owners and users of the “Buddha bar Nirvana Lounge” trademark, the companies Vintage S.r.l. and B.S., with regard to French companies, working in the food service, entertainment, phonographic production and sale of clothing and gadgets, George V Restauration s.a. and George V Records s.a. and of the Italian company San Carlo dal 1973 S.r.l., holders of the European Union and international trademark designating Italy “Buddha Bar”. The Court of Florence instead granted the counterclaims requested by the defendants and aimed at ascertaining the invalidity of the mark of the plaintiffs.

Then, in 2013, the sentence by the Court of Appeal of Florence rejected the appeal of the first-degree losing parties (Vintage S.r.l. and B.S.) by specifying, among the other questions, that the claim of invalidity of trademarks of the French companies, put forward for the first time in appeal degree by the first-degree losing parties could not be examined, as it had not been proposed before the Court in due time, and not detectable by the court, yet indicating the justification of the action by the public prosecutor.

The Court of Cassation, with the aforementioned judgement, rejected the appeal of the losing parties in first and second degree and confirmed what had been sentenced by the Court of Appeal of Florence, which, according to the judges on procedure, had correctly interpreted – on the power of the judge to detect ex officio the invalidity of a trademark at any stage and state of the proceedings – the Art. 122, paragraph 1, of the Industrial Property Code (IPC), pursuant to which: “… the action aimed at obtaining the declaration of revocation or invalidity of an industrial property can be exercised by anyone who has an interest in it and promoted ex officio by the public prosecutor. Notwithstanding the art. 70 of the code of civil procedure the intervention of the public prosecutor is not mandatory”.

According to the petitioning companies, the invalidity of the trademark would be always ascertainable ex officio, if dependent on unlawfulness.

The Court of Cassation instead judged that neither art. 122 nor any other provision of the IPC provide that the judge can declare ex officio the invalidity of a trademark, which has only the right to request the intervention of the public prosecutor. Moreover, this conclusion is conhesive with the European legislation, which excludes the refusal ex officio and limits the legitimation to enforce the invalidity of a trademark.

Therefore, the judges on procedure, having considered the above, have expressed the following legal principle:

“Due to the simple presumption of validity of the occurred registration of the trademark with the presence of the requirements provided for by the law, the judge cannot establish ex officio the invalidity, while maintaining, in the cases provided for by art. 122, paragraph 1, IPC, the faculty to request the public prosecutor for his autonomous determinations regarding the exercise of the action”.