The Italian Supreme Court return to rule on the notorious trademark

The Italian Supreme Court of Cassation, with the recent judgment no. 27217/2021, decided on the merits of the notorious trademark, by accepting the appeal of the fashion house G.G. that was requesting the declaration of invalidity of the registration of two trademarks owned by a Chinese citizen, due to lack of novelty.

In particular, the Italian Supreme Court of Cassation, on the basis of a general and brief assessment, believed that the trademarks of the renowned fashion house and the questioned ones were not similar assuming that the second ones had proper distinctions able to exclude any risk of confusion and connection in the consumer.

The said Italian Supreme Court of Cassation also observed that the trademark of G.G., being well-known, contributed to exclude the said risk of confusion, being the average purchaser of the products a skilled person. In particular, the same notoriety of the preceding trademark and the fact it is engrained in the costumers’ mind would have excluded any chance of error.

Against said decision, G.G. appealed to the Italian Supreme Court of Cassation, complaining, among other complaints, that the Italian Supreme Court of Cassation did not consider the broadened protection of notorious trademarks, by only – and wrongly – referring to the lack of confusion, which is an element that is, however, totally irrelevant for the purposes of the application of the discipline on notorious trademarks.

It is here mentioned, for this reason, that notorious trademarks get a “strengthened” protection which goes beyond the risk of confusion itself. In particular, as the claimant itself found, the discipline of notorious trademarks (Legislative Decree no. 30 of 2005, art. 13, letter f and art. 20, letter c) does not depend on the subsistence of such risk, taking into account rather the damage to the distinctive feature and to the notoriety as well as to the illicit advantage the infringer benefits from the prestige of the preceding trademark.

In particular, the damage caused to the distinctive character of the notorious trademark arises when its ability to identify the products/services which it has been filed for turns out to be weakened due to the use of the later trademark which provides the loss of identity of the known trademark and of the consequent recollection in the general public’s mind. The damage caused to the notoriety, instead, arises when the products/services, for which the later sign is employed by the third, can be perceived, by the public, so that the power of attraction of the notorious trademark turns out to be compromised.

At last, as the Italian Supreme Court of Cassation will recall, the concept of advantage, wrongly deduced from the distinctive character or the notoriety of the preceding trademark, comprises in particular «the case wherein, by the transfer of the image of the notorious trademark or the features it transfers on the products that have the same or a similar trademark, an obvious parasitic exploitation subsists in the wake of the trademark which benefits from notoriety without the owner of the preceding trademark having had to make an effort and without any adequate economic remuneration to compensate for the commercial effort the owner of the trademark had to do in order to realize it and to keep the image».

Therefore, by expressing his point of view on the issue and after stating the fundamental conditions of the regulation of notorious trademarks, as above mentioned, the Italian Supreme Court of Cassation observed that it is totally irrelevant to examine whether or not there is a risk of confusion.

The said Italian Supreme Court of Cassation, therefore, annuls the judgement and remits the case to the Court of Appeal with a different settlement.

The Court of Appeal will have to assess if the use of the later trademark constitutes or not, in the light of the cited parameters on the notorious trademark, a use lacking a justified reason, enabling to benefit from the distinctive character or the notoriety of the trademark illegitimately, namely damaging the features of said trademark.