The curtain comes down on the monopoly held by Unic (the Italian Tanning Company Association) of the so-called “vacchetta” (little cow), the mark consisting of the symbol portraying stylised animal skin. The Court of Milan ruled in this way stating the invalidity of the collective or certification trademark represented by the aforementioned mark. The lawsuit originated in 2009 when the French company Chaussures Eram SARL along with other trade associations commenced an action against Unic Servizi Srl.
The plaintiffs claimed the cancellation of the collective trademarks already registered and of those whose application was still pending having the graphic sign of stylized animal skin with or without the wording “vera pelle” (genuine animal skin) or “vero cuoio” (genuine leather) as their core element.
The grounds of nullity sought by Chaussures Eram were as following: • lack of novelty ab origine, since the devise part of the trademark was perceived as generic by consumer; • alternatively, vulgarization occurred after filing; • lack of control by Unic on the use of the contested marks, as requested for collective trademarks; • breach of the Italian antitrust laws by Unic.
The Court of Milan ruled only on the first two aforesaid claims and commented on the antitrust issue. The case is continuing with respect of the other claims.
In compliance with Italian doctrine, the Court underlined the different nature and function between individual and collective trademarks. The latter differ from the former in the requirement of distinctiveness but the rules governing the requirement of novelty remain the same. This implies the use of the same criteria of individual trademarks in order to assess whether a collective sign is generic or not. The requirement of novelty is sufficiently fulfilled when the collective trademark also contains additional elements, although merely descriptive, provided that the combination of words and device confer to the mark an overall distinctive character.
In the light of the above, the Court of Milan stated the nullity for lack of novelty of the trademark consisting solely of stylized animal skin.
The same mark has also been declared invalid due to supervening illegality. The framework policy is the Directive 94/2011/EC which regulates the use on footwear of labels containing symbols suitable for identifying the materials used in this product. The symbol chosen for identifying leather goods is the stylised cow skin, namely the same contested mark. The monopoly of Unic appears to be incompatible with the scope of the directive and the trademark can not be considered valid despite the acquiescence of the third parties.
The Italian Court declared the validity of the Unic’s trademarks consisted of device and wording “genuine animal skin” and “genuine leather”. These complex trademarks meet the requirements of novelty, not having been previously used on market, and of distinctiveness, provided that the guarantee function of the collective trademarks is fulfilled despite the descriptive nature of the words.
The same trademarks, underlined the Italian Court, are not contrary to the European directive since what has been made compulsory is the use of the symbol of the cow along with the word “leather” but not the use of the vacchetta mark with the words “genuine animal skin” or “genuine leather” which present a precise graphical layout and capital letters.
Although the case is not concluded, the Court of Milan judgement has an important implication: Unic can not sue third parties for improper use of the vacchetta together with the word “skin” or “leather” when the overall graphical impression of the third parties trademarks is different and presents distinctiveness, although minimal.