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
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