UNKNOWN BANSKY IS A REGISTERED TRADEMARK.

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The Court of Milan has recently expressed itself on the protection of the works of the street art artist known as Banksy, whose identity is, as many will perhaps know, unknown.

 The case was commenced by Pest Control Office Ltd which is the company that protects the artist's rights. Pest Control Office is also the owner of certain trademarks ("Banksy") but also of the distinctive signs that represent some of his most famous works, such as the little girl with the red balloon and the flower launcher. Pest Control therefore sued 24 Ore Cultura s.r.l. complaining the infringement of its trademark rights by the Sole 24 Ore that organized the exhibition “The art of Banksy. A visual protest ".

 According to Pest Control, the title of the exhibition violated Basnky's rights on the same registered trademark. Likewise the violation would have been perpetrated through the use of images of the little girl with the red balloon and of the flower thrower in the promotional material of the exhibition.

 On one hand, the Court considered the use of the signs in question on the merchandising of the exhibition to be unlawful, as a mere commercial use for the promotion of generic consumer products without relevance to the exhibition, and therefore not considered as a legitimate descriptive use of the other people's brand.

 On the other hand, instead, the Court considered that the use of the Banksy sign and those corresponding to the aforementioned works in the promotional material of the exhibition constitutes a lawful use of the brand of others, having a merely descriptive purpose of the exhibition itself.

 The Court also rejected the defendant's defense based on the fact that the owners of the exposed Banksy works (aliases of the multiples of his street art works sold by him) had expressly granted the defendant also the right to reproduce these works.

 In fact, according to Italian copyright law, "the transfer of one or more copies of the work does not matter, unless otherwise agreed, the transmission of utilization rights, ". In this context, the Court stated that, "Case Law has already made clear for some time that even the photographic reproduction of a figurative work of art in an exhibition catalog represents a form of economic use of the pictorial work and falls within the exclusive right of reproduction reserved to the author ”.

 Notwithstanding the foregoing, the Court ruled that unauthorized reproduction of the works in the catalog also constituted unfair competition to the detriment of the defendant. This case, in fact, requires not only the unlawful conduct, but also that this can actually cause damage to the competitor who complains about the offense.

 Having therefore ascertained that the only offense attributable to the defendant is the use of the appellant's trademarks on merchandising products, the Court inhibited the further marketing of the merchandising products, with the setting of a penalty sentencing of the defendant to pay part of legal fees incurred by the Recurrent.

THE FIRST ROUND OF THE BATTLE DIESEL/ZARA GOES TO...

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Otb, the group founded by Renzo Rosso, which includes brands such as Diesel, Maison Margiela and Marni, recently won a judgment before the Milan court against the Inditex group that controls the well-known Zara brand. The company founded by Renzo Rosso has seen to welcome from the Court of Milan its arguments sustained in the case started in 2015 against the Spanish company, accused of having reproduced with the Zara brand of jeans produced by Diesel and sandals designed by Marni.

Although the Iberian group supported the existence of substantial differences between its own products and those of Otb, claiming the impossibility of the Court award damages being a foreign company without headquarters in Italy, the judges decreed violation of the registered design of the Skinzee-sp jeans model and the unregistered design of the Fussbett footwear.

It is not the first time that the Iberian group is involved in such accusations. Just over a year ago, the Danish "Rains" label specializing in rainwear has brought a lawsuit to Inditex in front of the Danish Commercial Court for breach of design and unfair competition by requesting the immediate termination of the sales of an allegedly infringing model and the compensation for damages for the loss of the corresponding profits.

The Shape of Audermar's Piguet "Royal Oak" is not a 3d Trademark.

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The Court of Milan has recently expressed its opinion on the protection of the shape of the well-known "Royal Oak" watch created in 1972 by the Swiss company Audermars Piguet initially protected as a three-dimensional trademark.

Audemars Piguet recorded the shape of the relative lunette as an international figurative mark and complained on a trademark counterfeiting and unfair competition case for the sale of watches marketed by the Milan based start-up “D One”.

At first, the court issued an iaudita altera parte restraining order prohibiting the future commercialization of such watches however, the court overturned its initial decision and dismissed the appeal of Audemars Piguet on the grounds that "there are numerous elements of doubt about the validity of the operated trademark", as evidenced by the fact that its registration as a Community trade mark has been denied by the competent office (EUIPO).

In particular, according to the Court, the trademark seems to lack distinctive capacity, ie the ability to "distinguish products from those of another manufacturer and, therefore, perform the function of identifying the entrepreneurial origin of the product";

Again, according to the court of Milan, the three-dimensional distinctive sign does not even seem to have acquired distinctive capacity through use (so-called "secondary meaning"), "not having been documented uniform use" of the sign itself ".

Finally, the registration of the shape in question as a trademark does not even seem compatible with the provisions of art. 9 CPI, according to which "signs constituted exclusively ... from the form that gives substantial value to the product can not be registered as a trademark".

 In terms of unfair competition, the judge recalled that, to integrate the unfair competition law, the servile imitation of the product of others must "invest characteristics that are totally inexistent with respect to the function they are intended to perform", or those "arbitrary and whimsical" and "new with respect to the already known" characteristics that give originality to the product and have distinctive capacity, so that the public is led to bring them back to the company from which the product originates: only when these characteristics are concerned, servile imitation invests "elements capable of generating confusion in the public" and thus integrates unfair competition with confusion.

In this case, the judge did not recognize the existence of such an imitation, stating essentially - on the basis of what was found at the point of counterfeiting of the mark - that the imitated forms would be "structural and non-distinctive", as well as in some cases "Now acquired to the collective taste, having undergone a certain standardization", and that in any case there would be "significant differences" between the two products.

EVEN A WINE GUIDE IS A PROTECTED CREATIVE WORK.

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In a recent decision, the Court of Rome ruled on an unfair competition case between two wines guides "Bibenda" (published by Bibenda Editore) and "Vitae" owned by AIS (the Italian Sommelier Association). The Court found relevant similitudes both relating to the physical format of the Guide and the descriptions of companies and wine production data, and "strong elements of consistency in the sequence of arguments".

Immediately after the interruption of a collaboration between the two parties, AIS  began to distribute a new Wine Guide to its members, called "Vitae", but it appeared to the authors of "Bibenda" too similar, under a multiplicity of points of view, to the one created by them according to well-defined editorial criteria. Criteria which, according to the judgment, are sufficiently similar to those adopted by Ais for "Vitae". For this reason the Court upheld Bibenda Editore's requests and stopped the publication of future editions of "Vitae". Ais was also sentenced to pay damages (still to be quantified) in favor of Bibenda Editore.

According to the judgment of the Court "an analysis of the guide published by the defendant (AIS) shows significant similarities with the Bibenda’s Guide in relation to the volume size, the material used for the cover, the binding and the fonts used and the format.

Significant similarities can be found in company descriptive descriptions, in both guides, with the same sequence and within an identical structural context and according to a common graphical presentation, data relating to company name, address, internet site, mail address, year of foundation, property, bottles produced, vineyards, direct sales, company visits, introductory part, name wine, typology, grapes, alcohol content, price, bottles produced, tasting, winemaking and matching.

It is also common to evaluate products with symbols placed on the right side of the pages.

As already noted, the two guides have strong similar elements in the sequence of arguments (...) ". On the basis of these arguments, the Court of First Instance upheld Bibenda’s claim and prevented the Italian Sommelier Association from publishing Vitae's guidebook unless significant adjustments would be made to substantially differentiate it from Bibenda's guide.

Indirect and Subliminal Advertisements on Social Media.

The advertising market is undergoing a major change and indirect - subliminal advertisements promoted through online and social networks are becoming more and more common.

Indirect advertising is a clear and explicit message that appears on unusual spaces, but not mentioned as such. Subliminal advertising, instead, isn’t evident. This practice is banned by Italian law but only with respect to TV advertising and although film and television are a fertile ground for this kind of promotion, new challenges have emerged above all on social networks. Indeed, as the world wide web represents a new opportunity to express our thoughts and interests and tastes and a new way of learning and sharing information and content, companies have also begun to use them in an explicit or tacit manner.
On the one hand, we have real advertising spots and sponsorships, although not fully controlled: Facebook and Instagram, for example, check that ads don’t have an illegal content or prohibited by rules but they don’t control the accuracy of the information communicated, nor their congruity with the regulation, since there is no discipline code to be respected.

On the other hand we notice serious “product placement” proliferation within the most clicked profiles.

In this regard, the British Competition and Markets Authority stood up against disguised advertising, which is not recognizable in photos and videos posted on social media. Recently also the American Federal Trade Commission, for the first time addressed the issue, asking “web influencers” to emphasize that hidden  recognizable through hashtags or comments.

However, there are no specific rules governing indirect and subliminal and the terms of use of social media like Instagram, provide and restriction. The question arises as to whether consumers, who shall not be subject to untruthful and deceptive ads, have also the right to distinguish the advertising contents from a “lifestyle tips”.

Recently, the Italian National Consumer Union has questioned the Competition and Market Authority (AGCM) to ask for the legitimacy of indirect and subliminal advertising on social networks. The legal basis for this controversy is the article 22 of the Consumer Code which asserts that the commercial intent must be explicitly stated if it is not obvious from the context or if it is capable of misleading the consumer.

The AGCM should soon clarify the issue and provide adequate information both on the relationships between producer and influencer, and on the obligation to declare the advertising purpose of the posts.

Meanwhile, Instagram has launched a new tag, "Paid Partnership with", so that users can include it in their stories and post. Alternatively, many bloggers, including the most famous Chiara Ferragni, have started using some "claim-hashtags" such as #ad, #advertisement, or #advertising to highlight the commercial purpose of their photo, protecting the consumer.
 

Facebook's Copyright Infringement case continues in front of the Court of Milan

The case between Facebook and Faround will be heard in front of the Milan Court of Appeal on April 4. In the first degree Facebook was sentenced for the first time for unfair competition and copyright violations against Faround, a software application created in 2012  by the Milan-based company Business Competence.

On the first instance the Milan’s Court, had held that Facebook’s application Nearby was infringing Fararound’s electronic database which is protected under Italian Law.
Faround selects data on Facebook, through the profiles of registered users, and organizes and display them on an interactive map. The map then shows shops near to the user's position, also with relatives reviews and information on discounts and offers. Indeed this information is not owned by Faround. However the Court held that the mode of their organization holds a degree of originality which should be granted copyright protection. In fact, "the previous programs developed by Facebook (Facebook Places) and by third parties (Foursquare and Yelp) did not have the same capabilities as Faround: the first was a kind of pager to reach friends and not a geolocation of shops close to the user, while others were designed on the basis of logical algorithms working on the base of data entry provided by members of their social networks, and not Facebook’s.”
For these reasons, the Business Competence Srl accused and sued Facebook for infringing the application’s concept and format, launched with the name of Nearby. In addition, Nearby attracted professional advertisers, perpetrating unfair practices on the advertising market.

The Court of Milan, found that the two applications had the same functionalities and overlapped and ruled for the publication of the decision on the newspapers "Corriere della Sera" and "Il Sole 24 Ore" and, for at least fifteen days, on home page of facebook.com. The Court also banned any further use of Nearby in Italy, placing a fine of 45 thousand euro for each day of violation of its order . Facebook has appealed the decision in front of the Appeal  Court of Milan, which, at the moment, has rejected the suspension request of the provisional measures imposed at first instance.