1. In February 2016 the IP Section of the First Instance Court (“Tribunale”) in Firenze (Italy) came to deal with some peculiar aspects of IP rights’ protection. The case originated from a complaint filed by a restaurant owner against a competitor (originally a potential business partner in a - not concluded - franchise deal), intending to protect its IP rights relating to registered trademarks (TMs) and to its “shop layout,” alleged to be covered by two registered community designs (RCDs).
1.1. Arguing that he had registered both, a number of TMs – such as ‘american graffiti’, ‘american graffiti country diner’, ‘american graffiti on the road’ and others, similar ones - in class 43 (of the Nice Classification) as well as two RCDs in class 6 (of the Locarno Classification) for ‘composite furniture’, the plaintiff claimed that the defendant had infringed on his IP rights when choosing and adopting the furniture and the set-up of the competing diner and by making use of terms such as ‘finger food’, ‘special Tex-Mex’, ‘basket sandwiches’, ‘frenchontroni’, etc. for the dishes offered in the food menu.
1.2. The defendant reacted by filing a counter-claim, meant to
obtain annulment both, of plaintiff's registered trademarks,
basically coinciding with the renown US movie "American
Graffiti" (of 1973) as well as of the Registered Community
Designs (for lack of novelty and of individual character).
2. The Court in Firenze resolved the case through judgment no.
1112, issued on March 18, 2016 and felt that its evaluations should
logically start by examining the defendant's
2.1. With respect to the requested annulment of the
plaintiff's registered TMs, the Court found that the defendant
had no proper standing for such counter-claim as he had not been
able to substantiate the existence of his 'prior rights'.
Therefore, the claim was dismissed.
2.2. Then the Court passed on to deal with the issue whether it
was possible to seek – and obtain – protection of a
'shop layout' like the one alleged by the plaintiff in the
On this point the Court found that:
- In general terms, the set of a shop or restaurant, consisting of
its décor, of characteristic denominations used, of the menu
and of other specialties offered to the clientele, may qualify for
protection under the registered community design Regulation, being
covered by the description contained in Class 6 (and its
sub-classes) of the Locarno Classification.
- More specifically, a particular 'store layout' can also
result suitable – even by design alone - for IP protection,
provided the presentation of an establishment includes a
'sign', capable of graphic representation and distinctive
capacity with respect to the 'goods' or 'services'
of an undertaking (the Court makes a clear reference to the
judgment July 10, 2014 of the Court of Justice of the European
Union in the Apple case, C-421/13).
- On the contrary, elements simply evoking a certain historical
period with characteristics typical for such period and as such
fixed in our collective memory, lack both, of novelty as well as of
- Therefore, any attempt, meant to claim exclusivity rights with
respect to a 'format' or outlet' actually originating
from the reservoir of such collective memory, results in
exploitation of 'collective heritage' and may therefore not
lead to exclusivity rights in favor of a specific subject.
Hence, the Court held the defendant's second counter-claim
as grounded and annulled plaintiff's RCDs.
3. Before starting an IP dispute in court, it is wise to perform
an in-advance check on the strengths of your own position. Without
a clear idea about your own standing, sometimes, such initiatives
can result in a backlash in your face.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstanc
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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