Italy: An Unsuccessful Attempt To Claim Protection For IP Rights In Relation To Hermann Rorschach's Psycho Diagnostic Plates

Last Updated: 20 August 2014
Article by Felix Hofer

Recently a First Instance Court1 in Firenze (Italy) was called to deal with interesting IP issues in a lawsuit between two publishing houses. In the context of the dispute the plaintiff sought also for temporary measures meant to prevent the defendant from continuing its sales of plate sets used for psycho diagnostic purposes in a procedure commonly known as the "Rorschach Test".

1. - The background of the dispute:

In August 2013 a Swiss publishing house initiated a lawsuit against a local company, previously acting – on license – as exclusive distributor for Italy of a set of ten plates2, used for performing what is commonly known as the "Rorschach Test"3 The contractual agreement between the two companies provided that the Italian distributor was held to sell annually a minimum number of plate sets. After the local company's failure to meet such requirement (of minimum sales), the Swiss publishing house terminated the contract in 2012.

In spring 2013 the Swiss company learned that its former Italian distributor was offering and selling its own plate sets under the commercial denomination of "Hermann Rorschach - Psycho diagnostic Plates", presented as "Hermann Rorschach's original plates, as edited by ...." and with the claim "..from today available on ... (web site URL) and at ... (company's sales) points ... in exclusivity for Italy".

The Swisscompany considered such practice as infringing on its IP rights and therefore accessed a First Instance Court in Firenze, where the (former) local distributor had its legal seat. In the course of the lawsuit the plaintiff also sought for temporary injunctive measures.

2. - The legal aspects of the dispute:

According to the Swiss company it had grounded reasons for a counterfeiting claim, as the business practices of its former distributor's for the Italian market were performed in violation both, of a Community (CTM) as well as of an international trademark, registered in 1996 and in 1991 with respect to the term "Rorschach". In addition, in the plaintiff's view, the practice also resulted in acts of unfair competition.

On such basis the Swiss company applied for a temporary injunction aimed at preventing:

  • defendant's further use (nationally as well as internationally) of the term "Rorschach" (infringing on the mentioned trademarks),
  • production, editing, commercial promotion through any means, offer and sale by the Italian publisher of its editorial product "Hermann Rorschach - Psycho diagnostic Plates",
  • also defendant's further use of the expressions "original" and "in exclusivity for Italy" in its descriptions of such editorial product,
  • the Italian company from performing further acts of unfair competition in prejudice of plaintiff's business.

In addition, the application sought for:

  • a Court order forcing the defendant to recall all infringing products from the market,
  • a daily penalty (of Euro 2.000) for any delay in complying with the Court's orders or for any further violation,
  • an order obliging the Italian company to publish - on a local, nationwide distributed newspaper (in a size double than the one used for ordinary text), on the home page of the defendant's web site as well as in one of his periodic magazines - a notice about the Court's decisions.

According to the defendant's arguments:

  • the Swiss company had not substantiated its legitimate title for registering the patronymic Rorschach as a trademark,
  • the patronymic lacked of distinctive capacity,
  • the trademark registration had been performed in bad faith,
  • with respect to the specific trademark, 'vulgarization' had occurred,
  • should the Court consider the trademark as valid, use for descriptive purposes should be allowed,
  • as the previous distribution agreement had been terminated, no acts of unfair competition could be found.

3. - The Court's decision4 on plaintiff's application for injunctive relief:

In a preliminary statement the Court explained that most arguments brought by the disputing parties related to the merits of the case and therefore could not be examined in the course of an injunctive relief procedure, as their evaluation required in-depth investigation and more adequate substantiation.

For the time being and with respect to plaintiff's application for a temporary injunction, the main issue to resolve appeared to be that of assessing whether the reproduction of parts of Hermann Rorschach's main opus "Psychodiagnostik" - and particularly the ten test plates - could benefit from protection under a copyright perspective. The Court denied such protection with respect to the fact that Hermann Rorschach had passed away in 1922, therefore being evident that the maximum period for copyright protection had elapsed.

The Court then added that – even without anticipating its findings on the validity of plaintiff's trademarks – such IP rights could not be extended up to preventing third party use of the patronymic "Rorschach" in order to identify the essential characteristics of a product. A set of diagnostic plates prepared for performing the specific test would clearly need to make use of the patronymic "Rorschach" and to contain a reference to the person who had invented the procedure.

Had the defendant made use of the particular, original reproduction technique and the know how used – exclusively by the plaintiff – for editing the diagnostic plates5, the Court would have considered a different conclusion.

Based on these findings, the Court considered that no acts of unfair competition had been performed as the reproduction of the diagnostic plates was no longer restricted and as the use of the patronymic "Rorschach" resulted in a legitimate indication. Also the term "original" could not be questioned as no original blurs existed (from which to draw copies). Finally, the Court disagreed on plaintiff's objection to the use of the claim "in exclusivity for Italy", as such indication was no longer present in the defendant's 2103 products' catalog.

Therefore, the Court dismissed the plaintiff's application for injunctive relief and awarded him with 4.300 Euro in legal costs for the specific procedure.

It will be interesting to see whether the Court will maintain its temporary findings when deciding on the merits of the case.

(Reference date: August 2014)


1.The competence for such disputes lies with the so-called 'Companies' Court', a special section of the Ordinary Civil Court, which – after a recent reform of the Italian Code of Civil Procedure - has absorbed also the functions previously assigned to the Special Section in charge of dealing with IP disputes.

2.The plates were part of Hermann Rorschach's main opus "Psychodiagnostik" - published back in 1921 - and basically consist in a set of blurs differing in form, shape and color.

3.A procedure frequently used for performing psychological tests and exams for diagnostic purposes. In the course of the procedure the plates are shown to (and interpreted by) individuals taking the particular test. Test persons' answers allow specialists to achieve important diagnostic conclusions.

4.Dated January 20th, 2014.

5.Apparently such practice could not be found as the plaintiff had contested significant differences in the plates' reproduction, to a point where the defendant's product – according to the Swiss company – resulted questionable from a scientific perspective

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Felix Hofer
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.