Italy: Case Study: Protection Of Famous Trademark

Last Updated: 20 February 2008
Article by Silvia Guizzardi and Yan Pecoraro

On November 23 2007 the IP chamber of the Court of Naples issued a decision in proceedings brought by the Moulin Rouge, the famous Parisian cabaret, against an Italian production company which was counterfeiting the Moulin Rouge's trademark in Italy.

The latest decision is an example of the efficiency of the Italian IP chambers: an interim measure in favour of the Moulin Rouge was secured less than 24 hours after filing. It also confirms certain principles already stated by commentators and established by case law.

Dedicated Courts

Decree-Law 168/2003 created specialized IP chambers in 12 district courts and courts of appeal in Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice. The IP chambers have exclusive competence over all proceedings involving industrial and intellectual property, including:

  • national, international and Community trademarks;
  • utility patents;
  • industrial designs;
  • copyright; and
  • unfair competition issues arising from IP infringements.

Specialist judges sit in each chamber; cases are decided by a panel of three judges in ordinary proceedings and by one judge in urgent proceedings. The aim of the specialized IP chambers is to improve the quality and efficiency of decisions in this complex area of law – the rapidity of the Court of Naples decision is a measure of their success.

Interim Remedies

The new IP Code makes certain interim remedies available to protect trademark holders' rights. In urgent cases, rights holders may obtain:

  • an injunction ordering the infringer to cease the infringement, which may carry a fine for further infringement;
  • the interim seizure of the infringing goods - this, like the order above, may be used as a means of proving infringement;
  • description orders;
  • access to the infringer's accounts and databases to discover information about its suppliers and clients; and
  • publication of the decision in national newspapers.

Interim measures require the rights holder to show that there is a well-founded prima facie case and a risk that the infringement may cause irreparable damage. Interim measures can be issued either inaudita altera parte (ie, on the basis of the writ of summons alone and without the other party being heard) or following a hearing at which both parties are present. In addition, seizure or description orders may be enforced, under certain conditions, in relation to products owned by third parties.

In the Moulin Rouge Case the judge first issued an inaudita altera parte decree containing an injunction against the infringer. The judge also set the amount of a conditional fine to be imposed in the event of further infringement. In light of further infringements committed by the counterfeiting party between the first decree and the first hearing, the judge not only confirmed the injunction, but also increased the fine.

According to case law and expert opinion, the order issued in this case must be considered definitive, as it does not require confirmation in ordinary proceedings. Generally, the Code of Civil Procedure provides that interim measures are temporary and must be confirmed in ordinary proceedings, which must be commenced within 60 days of the interim measure being issued. However, Article 669(8) of the code states that an interim measure which "anticipates the content of the decision in ordinary proceedings" need not be confirmed in this way. Therefore, such interim measures can be considered definitive if they are not challenged and revoked.

The code does not define when a measure will be deemed to anticipate a subsequent decision; rights holders must consider this when assessing possible action against a counterfeiter. Requesting an interim measure which does not anticipate a decision in ordinary proceedings will mean that the rights holder is required to request confirmation of the measure in ordinary - and normally protracted - proceedings.

Commentators and case law state that an order preventing further infringement should be regarded as an anticipatory measure and therefore does not require confirmation.

The potentially definitive nature of the order gives strong and effective protection for trademark holders. As it does not require them to engage in ordinary proceedings, it reduces the cost of trademark protection and does not involve the trademark holder in protracted and uncertain ordinary proceedings.

The order granted to the Moulin Rouge was given greater force by the imposition of a conditional fine to be paid by the counterfeiting party for further infringement of the order. Such a fine is not a form of anticipated liquidation of damages, but rather a deterrent against further infringement.

Protection of 'Strong' and Famous Trademarks

'Strong' trademarks are not descriptive of the promoted products or services and therefore have no direct conceptual connection with such products or services. The MOULIN ROUGE trademark, being neither descriptive nor a term commonly used in the entertainment industry, is a strong trademark under Italian law. A strong trademark obtains stronger protection: such a trademark is additionally protected against counterfeiting which confines the strong trademark with non-distinguishing words, figures or other signs.

In this case the counterfeiting party produced a show in Italy under a title which combined the words 'Moulin Rouge' with three other words that were insufficient to distinguish the counterfeiter's sign from the MOULIN ROUGE trademark.

If a trademark is recognized as well-known, as in the case of MOULIN ROUGE, its protection extends beyond the relevant market in which the trademark is used.

In Summary

This case confirms the strong position of trademark holders in Italy and the speed and effectiveness of interim measures to stop infringements, particularly when, under certain conditions, the plaintiff is not required to begin full proceedings on the merits to confirm the interim measure. This enforcement system saves trademark holders time and money.

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.

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