On January 30, 2019 EUIPO Grand Board of decisions was recently faced with the case of the application of the “Brexit” Trademark. The case concerns the eligibility for registration of the figurative sign “BREXiT” for ‘energy drinks containing caffeine; beer’ in Class 32.

 The application was refused by the examiner for lack of distinctiveness and against public policy as it was pointed out that the relevant public includes all consumers in the EU as they frequently encounter the term through the mass media and the internet.

With respect to the infringement of public policy or to accepted principles of morality the GB found that word ‘Brexit’ denotes a sovereign political decision, that was taken legally and has no negative moral connotations; it is neither an incitement to crime, nor an emblem for terrorism or a byword for sexism or racism. The word alone does not express an opinion. The fact that part of the UK public may have been upset by a controversial decision taken democratically does not constitute an offence. The GB therefore concluded that the sign cannot be deemed to be contrary to the accepted principles of morality, in and of itself, nor when used as a brand for the goods applied for.

Nevertheless, the term was, already at its filing date, so well-known to consumers as the name of an event of a historical and political nature that it would not be associated, prima facie, with specific goods originating from a specific trader. It may only acquire distinctiveness if consumers are sufficiently exposed to it in a trade context. Moreover, the colours and font are unable to divert the attention of the public away from the non-distinctive message conveyed by the word. The background evoking the Union jack accentuates this message. For the above reasons, the GB refused the application and dismissed the appeal.

EU Trademarks and the Brexit


The UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.

Christian Louboutin's Red Shoe Soles are a valid Trademark.


According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".



The Court of Torino recently ruled in a lawsuit promoted by Basic Net, owner of the well-known brand K-Way, against Giorgio Armani due to the marketing, by the latter, of products bearing the known K-Way colored.

Basic Net is the owner of a registered color Community trade mark which reproduces the famous colored strip which characterizes the clothing items branded by K-Way.

In its decision, the Court of Turin shared the arguments of the Court of the European Union concerning the application for registration of Basic Net’s Community figurative mark consisting of strips. On this occasion, the Court of Torino confirmed the rejection of the application for registration of the sign due to lack of distinctiveness. However, the Court also verified the acquisition of a distinctive character following use (so-called "secondary meaning") in four European Union States, including Italy.

The Court of Torino therefore concluded that the famous colored stripes of a K-Way constitute "a valid mark of fact, endowed with autonomous distinctive capacity even when used in combination with the K Way brand".

The Italian Court then ruled that the products they identified are "at least very similar (in the sense that they belong to the same line of casual / casual clothing) and sold at entirely comparable prices". This implies a risk of confusion between the brand of the actress Basic Net and the colored band that appears on the Armani garment. According to the Court, the likelihood of confusion arises from the use of the colored band, the overall visual impact it generates and its positioning on the sides of the hinges, and the fact that both products bearing the strip in question are marketed at the same stores and that their cost is almost similar. Such circumstances "can in fact concretely induce the consumer to believe that between the two companies there are ongoing non-existent co-branding operations". Finally, the Court of Turin ruled out the principle of the application of the c.d. “imperative of availability” opposed by the defendant

According to this principle third parties must always differentiate themselves through distinguishing additions or other arbitrary variations, sufficient to eliminate the risk of confusion with other products.

In this case, however, the additions made by Armani (aka the famous stylized eagles and the "AJ ARMANI JEANS" brand) are not considered sufficient to differentiate the product.

According to the Court of Torino the affixing of a notorious mark on the product does not exclude the counterfeiting of the figurative mark of another; if this were not the case "we would arrive at the paradoxical consequence of allowing the owners of the former to appropriately take possession of the latter, with the only precaution to use it in association with their distinctive mark, highly established on the market and highly distinctive and recognizable". For all the above, the Court concluded by declaring that the behavior established by Giorgio Armani "Constitutes an act of trademark infringement and as well as an act of unfair competition". The Court therefore issued against Armani an injunction order from the import, export, sale, marketing and advertising of class 25 products (in particular jackets) bearing the trademark object of the case or other mark containing the sign in question extended to the territory of the European Union and an order of destruction in Italy of counterfeit products.

The Peril of Using your name as a Trademark.

About a year after Thaddeus O’Neil launched a menswear line inspired by the surf culture he grew around on Eastern Long Island, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles owner of the famous “O’Neill” sports apparel trademark.

This was the beginning of legal dispute between the surfwear brand founded in 1952, O’Neill, and the independent New York designer who is gaining more and more popularity after winning several fashion contests.

In their dispute with the New York fashion designer, O’Neill argues that the brand has been using its name since the 1950s, and that Thaddeus O’Neil’s marks are “confusingly similar”. According to O’Neill this could of course lead consumers to be deceived and think that the companies are related.

Trademark disputes involving patronymics (i.e. the trademark equivalent to the founder’s name) are quite common in fashion. In 2012, Tod’s — which was operating the Roger Vivier label under a license at the time — took Los Angeles handbag designer Clare Vivier to court for trademark infringement. She eventually settled and re-branded as Clare V. In 2016, Elio Fiorucci lost his case in Italy against the new owners of the brand he founded in the trademark case that involved the use of the “Love Therapy by Elio Fiorucci” trademark.

But what is the position of Italian Courts when use of patronymics could be confusing with other trademarks? In the end of the 80’s the Supreme Court stated that the use of a patronymic as a trademark is a legitimate use of a sign conflicting with a previous registered trademark so long that the previous trademark does not become a famous mark.

This principle has been reaffirmed by the Supreme Court in 2016 in the cited Fiorucci vs. Elio Fiorucci case.

Our tip? Carry out a preliminary trademark search before launching your brand bearing your name.

"Made in Italy" as a collective National Trademark

Recently Italian manufacturers have been talking about the creation of a "Made in Italy" brand, which would ensure the Italian character of the production process, based national on raw materials.

The draft of a "Voluntary Conformity Certification of Italian Origin and Specialities” is ambitious and it aims to increase the attractive power of Italy’s national supply chain, as a brand system that enhances products, production and domestic supply of goods and services.

The initiative has been put forward by Conflavoro, who has entered into an agreement with the worldwide agency for certifications Lloyd's Register, which has the power to issue certifications. The protection and certification mechanism is subject to a double control: one of an Internal Supervisory Body, set up by Conflavoro and the other is a Scientific and Technical Committee for the Address and the Development of Single National Brand, compose of external  experts in the field of world business, universities and consumer associations.

In particular, the food market seems the most interested in this project. Indeed, the single brand would be affixed on food products’ packaging and would ensure not only protection against counterfeiting system, but also a response to the increasingly stringent demands of consumers in terms of quality and safety of food and beverage.

Thus, the "Made in Italy" would become a sign of authenticity and traceability of Italian products and, if possible, also a symbol of innovation that coordinates taste and genuineness.

Marylin Monroe: a Registered Trademark

On 9 November 2016, The Estate of Marilyn Monroe has sued an apparel company of New York for having illegally used the “Marilyn Monroe” trademark by using the image of the famous star.

The Marilyn Monroe Estate registered at PTO (The United States Patent & Trademark Office) its own exclusive property on Marilyn’s identity, image, name and likeness and also the right to grant licenses to third-parties.
Thus the Monroe Estate owns and manages Marilyn Monroe trademark, which continuously for over thirty years was used in the market. This circumstance makes the trademark incontestable, providing it greater guarantees of protection.

For these reasons, the Monroe Estate demanded a jury trial for detecting infringements laid down by Lanham Act, 15 U.S.C. 1051 ss, New York Statutory and common law, and a compensation for damage, in terms of trademark infringement, trademark dilution and unfair competition.

No matter, therefore, that the name of Marilyn actually has not been used commercially by the defendant company: the image of the most famous diva of all time, when used as distinctive mark, falls within the “Monroe Rights”, owned by plaintiff.
More specifically, as it follows from a previous court rulling*, it’s necessary to distinguish the infringement of trademark exploitation’s rights from the image exploitation’s right. Only in the first case, indeed, law requires that the consumer is induced to believe that the use of the brand has been authorized by the owner.
On this point, Monroe Estate stated that a confusion, among consumers and retailers, occurred: in fact, many have contacted the company believing that defendant’s products had been approved, authorized or sponsored by the company which owns the trademark.

In this specific case, therefore, while it might be difficult, or even impossible, to establish an infringement of the mark, because the mark has not been used, Article 1125(a) 15 U.S.C. gives actor wide powers to bring a legitimate request.
In fact, the US federal trademark law is intended to protect consumers. If there is a confusion in the audience, there should be a likelihood of confusion, which is the case traceable to article 1125 (a) U.S.C.
The existence of  actual confusion coupled with a registered trademark should ensure the implementation of the rule, guaranteeing Monroe Estate the acceptance of requests .

Ivanka Trump's Copycat S(c)andal.

Aquazzura was founded in 2011 in Florence by Colombian-born designer Edgardo Osorio to create glamorous, sexy shoes for the modern woman.

Aquazzura, has recently filed a trade dress infringement suit against Ivanka Trump and her licensee, Marc Fisher, for allegedly copying the design of the “Wild Thing Shoe” a best seller of the Florence based company.

Ivanka Trump owns a New York-based clothing and accessories collection, under which she released a  shoe collection.

According to Aquazzura, Ivanka Trump and Marc Fisher are producing footwear that “mimics every key element of the trade dress of Aquazzura’s well-known and distinctive” shoes, in particular, a $145 "exact copy" of its own $700+ Wild Thing style.

Aquazzura, alleges that Trump and Fisher make use of the trade dress of the Wild Thing Shoe. 

Under US Law a trade dress is a form of trademark protection that extends to the overall commercial image of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design or shape/configuration of a product.

Aquazzura, which has set forth claims for trade dress infringement, unfair competition, and deceptive trade practices, is seeking both preliminary and permanent injunctive relief, an accounting of Defendants’ profits flowing from their use of infringing trade dress, damages, attorneys’ fees, and any “other relief as the Court deems just and proper.”


The Plain Packaging Saga

Two of the world’s biggest tobacco companies, namely Philip Morris International (PMI) and British American Tobacco (BAT), have recently filed lawsuits against the UK Government over its plan to introduce plain packaging for tobacco products. Both PMI and BAT argue that the measures deprive them of property in the form of trademarks, and are seeking compensation that could extend to billions of pounds if they succeed. 

“We respect the government’s authority to regulate in the public interest, but wiping out trademarks simply goes too far” said Marc Firestone, PMI’s senior vice president and general counsel. “Countries around the world have shown that effective tobacco control can co-exist with respect for consumer freedoms and private property.”

The measures, which are planned for a 2016 introduction, have been opposed by Big Tobacco companies from day one. The power of the tobacco industry to market their products has been slowly eroded, to varying extents, by legislation in countries around the world. In the UK, advertising was phased out between 2003 and 2005, and in 2012, tobacco products were banned from display in supermarkets and large shops.

In the claims filed to the High Court, PMI and BAT also claim the measures violate European intellectual property laws. The Department of Health responded  it would not let policy “be held to ransom by the tobacco industry”.

Lawyers for the Government are understood to be confident that all legal aspects of the new measures have been taken into account. But even if unsuccessful, tobacco companies may be hoping legal action will delay implementation or discourage other countries from taking similar action.

Indeed, as long as tobacco remains a legal product, then the owners of cigarette brands can make the argument that they shouldn’t be treated differently to other consumer products. 

Australia introduced a similar ban in 2012 with the aim of reducing smoking and is facing challenges at the World Trade Organization which say that the law creates illegal obstacles to commerce.

By Martina Clochiatti

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Tsclex Lawyers to attend INTA 2015

Tsclex  will be attending the largest trademark conference of the year, with an eye towards solidifying ties with current clients and building new relationships with trademark attorneys from around the world.
 It is more important than ever for our lawyers to interact with their foreign counterparts to share common experiences and best practices to ensure that trademark rights continue to be strengthened in Italy.
Tsclex will be represented at this conference by Partner Gianpaolo Todisco and associate Martina Clochiatti. From May 2-6, 2015 the International Trademark Association (INTA) will hold its 137th Annual Meeting in San Diego, California, USA.

Headquartered in New York City, INTA was founded in 1878 and now has more than 6,000 members from more than 190 countries, and is recognized as the world’s leading international organization dedicated to the development and improvement of intellectual property.

To schedule a meeting with either Gianpaolo Todisco or Martina Clochiatti, please contact us at

The Italian Supreme Court Rules on the "Alessi" Brand.

A few days ago, the Supreme Court ruled on the risk of confusion between a famous CTM trade mark  (Alessi) with the trademark "Exclusive Giacinto Alessi srl" which correspond to the name of the founder (Mr. Giacinto Alessi).

In the first two degrees, the courts had excluded any risk of confusion between “Alessi” and “Exclusive Giacinto Alessi” judging that the use of the latter was therefore legitimate.

The decision of the Supreme Court was however different according to the principles of limitation of the use of a surname which corresponds to a trademark.

The Supreme Court stated that "once a sign identical to the name of a person was validly registered as a trademark, the person who legitimately carries that name cannot adopt it (as a trademark) in sectors identical or similar to the previous trademark. The right to a name is, therefore, a clearly compressed in the economic and commercial sectors due to the prior registration of the name as a valid trademark.

The Court also argued that "Alessi"  is a  trademark  which has no links with the products / services offered and therefore stronger than the trademark “Exclusive Giacinto Alessi” which contains a descriptive term (the word exclusive).


What is Italian Sounding?

Protecting and developing products requires raising awareness about the historical, cultural and social heritage of our country.

Geographic origin is especially important for Italy, the European country with the most products registered as DOP and IGP.

The term Geographic Indication (GI) refers to DOP and IGP products as established by article 2 of European Community Regulation n. 510/06, OF 20 March 2006.

The matter of the fact is that the so called Italian Sounding Syndrome does not only concern food products: the phenomenon has reached enormous proportions, affecting products of all kinds, violating intellectual property and thus becoming a legally pursuable offense which is costing Italy 100's of billion.

Exactly that happened in Canada. Maple Leaf Foods registers "Prosciutto di Parma" as a trade mark,

produces some salted-dried pork and sells it under the Italian name. Next?

You guessed right: producers who make the traditional, original prosciutto di Parma can't call it by its real name in Canada because Maple Leaf Foods was more clever with the paperwork... 

What is the difference between the two you might ask?  Well...for one, Parma (the original ) only sells ham...

The Panther goes to Court.

By order n. 46868 filed in the Court on 13 November 2014, the Second Criminal Chamber of the Italian Supreme Court decided, to remit the examination of United Penal Sections on the following question: "if the introduction on the market of serial morphological toys, not bearing any brand, constituents the unlawful reproduction of articles protected by trademark is an offense according to Articles 473 and 474, or in art. 517

of the criminal code".

The case arose from the introduction into Italian territory of a batch of 21,822 puppets depicting a counterfeited

MGM "Pink Panther".

On the merits, the Territorial Court observed that the puppets seized strongly resemble the character "Pink Panther", which are a specific registered trademark and, therefore, as such, subject to trademark protection.

The Court is expected to rule in the next two months.

Why should you protect your IP?

Protecting IP is becoming increasingly difficult, particularly with the proliferation of online sales. The Internet has created an ideal and, often, an almost anonymous selling place for sophisticated counterfeiters of products.

Why should you protect your IP? According to a 2013 report by PricewaterhouseCoopers, the value of the global impact of counterfeit goods and illicit trade is estimated to be US$650 billion per year. That is US$650 billion of lost revenue for brand owners, authorized manufacturers, distributors and retailers of genuine goods.

Ignoring the infringement of IP rights when it arises can dilute the strength of the right itself, undermining distinctiveness (in the case of a trade mark) and the ability to stop future infringement. This has a knock-on impact on the value of goodwill of a business.

The cure? Many businesses elect to protect their IP by registering trade marks, design rights, and patents with the relevant authority (whether that is a national authority, such as the Office for Harmonization of the Internal Market (“OHIM”) or the World Intellectual Property Organization (“WIPO”).

My suggestions of ways in which a brand can strengthen its position vis-à-vis counterfeiters include the following:

  • Create a strong brand identity, using the same logos, designs, packaging etc., consistently across product lines.
  • Use security features, such as stickers, serial numbers, holograms or mylar/security strips in products to help aid detection of counterfeit goods. These details will also assist in monitoring the security of your manufacturing, distribution and retail processes.
  • Create an authorized manufacturing, distribution and retail network for products.
  • Make each entity in your manufacturing, distribution and sales chain subject to contractual obligations to protect your IP and report to you any instances where it has become aware of possible infringement, either by itself or a third party.
  • Register your IP with relevant national customs authorities to enable them to detect and detain counterfeit goods that are imported and exported, allowing you to take action, where appropriate.
  • Periodically collect and review information about any counterfeit goods that are discovered. You may choose to employ a ‘watching’ service to assist with this monitoring. This information will help you identify jurisdictions and territories where counterfeit goods are being produced as well as any weak links in your manufacturing, distribution and sales chain and the common distinguishing features of counterfeit goods.
  • Clearly allocate responsibility within an organization for dealing with infringements and maintain a portfolio of relevant information so that documents such as registration certificates, precedent letters of complaint and text for witness statements are easily accessible.

For any questions on how to protect you IP, feel free to contact: Gianpaolo Todisco at