Appeal Court Of Milan 1 December2000
President Dr. Vincenzo Serianni , Drafter Dr. Irene Formaggia – Anheuser-Busch ( attorneys Prof. Adriano Vanzetti, Prof. Luigi Mansani, Elisabetta Gavuzzi ) vs Budejovicky Budvar narodni podnik ( attorneys Carlo Fiammenghi, Alessandro Fiammenghi, Eva Fiammenghi, Carlo Maria Von Berger )
Advertising undoubtedly endows a mark with renown and concretises its prior use such as to rule out the novelty of a subsequent trademark, public knowledge of the mark and the product bearing said mark being important for this purpose .
Under Art. 6bis of the Paris Convention, the fact that a mark is well-known because it is widely used and has gained a reputation abroad rules out the novelty of a subsequent mark liable to create confusion even should the mark not be used in the State of the later mark .
Since the premise for protection given to appellations of origin by Art. 2 of the Lisbon Agreement is that they serve to designate a product whose characteristics or qualities are due exclusively or essentially to the geographic area, including natural and human factors, such protection is given to products whose taste, colour and appearance derive only from a set of environmental conditions which cannot be replicated in another place and which are determinative, or by a set of manufacturing and production techniques which cannot be performed or are not as valid in different environments. This protection must, however, be denied if the natural and human factors are not so closely associated with the environment as to be considered essential for the influence they exert on the product, with the result that the organoleptic properties of the product and the characteristics of the raw materials used may be found or reproduced elsewhere.
Protection for appellations of origin is refused for terms which do not indicate the name of the country of origin, the region or area in which the product in question is made.
Since Art. 5/1 of the Lisbon Agreement stipulates that the holder of the registration be clearly identifiable as a natural person or legal entity, modification of the title of the registration, from a specific firm to a more general " organizations that handle the production of the product in the region ", is invalid.
Once a mark has been adjudged invalid for lack of novelty its use is forbidden, under Art. 10 (old text) of the Law on Trademarks.
A series of trademark infringement and unfair competition actions is possible ( with the resulting prospect of granting both special and general protection under Art. 2598, no. 1 of the Civil Code ) when, in relation to the same situation of fact, the premises for both hold good.
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.