News

Since day 1, PGA S.p.A. has never stopped growing, with a consistent and quite remarkable pace.

This steady growth certainly reflects the expertise and dedication of its people who have become an essential part of the PGA family and an important asset of the Firm.

The time to reward these valuable talents is now. PGA has indeed decided to appoint four new Partners: Alessandro Cavazzin, Veronica Raffi, Daniele Rosa e Paolo Santonicola.

Being certain that they will honour the greater responsibility that this appointment entails, PGA wishes the new Partners all the best in terms of personal and professional achievements.

Infringement of IP and internet provider liability

The Swedish Court of Appeal condemned the provider Telia Company for having favoured certain internet sites in the infringement of intellectual property. The ruling was issued following an action taken in 2018 by Disney, Universal Studios, Warner Bros. and several other multinational companies. In particular, the Swedish Court had already intervened in the past by issuing a so-called dynamic injunction against Telia Company. The provider was ordered to block access to The Pirate Bay, Dreamfilm, Nyafilmer, Fmovies and many other sites for violation of section 53B of the Swedish Act on Copyright in Literary and Artistic Works. The applicants submit, therefore, that Telia, by providing internet access to its customers and also allowing access to those sites, cooperated in the infringements found.
The decision confirms the approach adopted by many countries and the recent growth in the use of dynamic injunctions to paralyze IP infringements.

The use of patronymic as a company name

In a recent ruling, the Italian Supreme Court of Cassation clarified the scope of Article 21, paragraph 1, letter a), of the Italian IP Code, regarding the use of patronymics in economic activity. This is the final event in a complex dispute brought by Salini Costruzioni S.p.a. against Salini LocateIli (now ICS Grandi Lavori S.p.a.), Salini Global Service S.r.l. and Claudio Salini. In particular, Salini Costruzioni acted in order, among other things, to prevent its counterparties from using the patronymic “Salini” as a company name.

On the basis of consolidated jurisprudence on the matter, the Italian Supreme Court has ruled that where two companies with share capital have the same name, the priority must be given to registration in the company register. On the contrary, neither the mere past use of the same name by another company, which has long ceased to operate and which was owned by family members of the partner of one of the companies registered second, nor the fact that the name of the latter coincides with the surname of one of those partners is relevant.

The registrability of commercial slogans

In a recent judgment (T-156/19, 13/05/2020, Koenig & Bauer), the General Court (EU) refused registration as a Community trade mark of the English language idiomatic expression ‘We’re on it’ to distinguish goods and services in classes 1 to 4, 7, 9, 11, 16 and 35 to 42.
According to the decision, in particular, the expression “We’re on it” would convey the idea that the applicant “will take care of it” or that it is worthy of trust or confidence. However, according to the Court, the message in question would be applicable to any type of product or service. The sign would therefore lack the necessary distinctive character.
With regard to the registration of slogans, reference is made to the famous judgment of the Court of Justice in the “AUDI” case. On that occasion, the CJEU ruled that the distinctive function of the mark may be compatible with that of the slogan provided that it is assessed on the basis, on the one hand, of the nature of the goods or services for which registration is sought and, on the other hand, of the perception of the relevant public.

The trademark “booking.com” cannot be considered generic

A trademark consisting of a generic term for the class of goods or services offered alongside the “.com” portion is not necessarily generic. On the contrary, if consumers do not perceive the mark as generic for the class of goods or services to which it refers, the mark can be considered distinctive and therefore registrable.
In this sense, the Supreme Court of the United States of America, in its ruling of 30 June 2020, ruled on the trademark “Booking.com” in the United States Patent and Trademark Office v. Booking.com.

As is well known, a trademark can be generic, descriptive, suggestive, arbitrary or imaginative. Suggestive, arbitrary and imaginative trademarks are inherently distinctive. Descriptive trademarks can only be registered if they have “acquired distinctiveness” in the assessment of the consumer public. On the contrary, generic marks do not qualify for registration because any economic operator may use the generic term of the mark itself to refer to the designated good or service without being the exclusive owner of the generic distinctive sign.

On this basis, the US Supreme Court has specified that a term is defined as generic when, taken as a whole, it indicates to consumers the class of goods or services offered under the mark. Since consumers do not perceive “booking.com” as the class of online travel booking services, “Booking.com” is normally not a generic mark. It is the consumer’s impression of the brand that determines whether the brand is generic or not. Consequently, the Court held that trademarks consisting of a generic term and “.com” are not necessarily generic.

The “Trentino apples” become PGIs

With the approval by the European Commission of the relevant implementing regulation, “Mele del Trentino” are officially recognised as a protected geographical indication.
In particular, with Regulation (EU) no. 2020/890 of 23 June 2020, published in the Official Journal of the European Union no. L 206 of 30 June 2020, the name “Mele del Trentino” was entered in the European Register of Protected Designations of Origin and Protected Geographical Indications, as a product in class 1.6. Fruit, vegetables and cereals, fresh or processed, listed in Annex XI to Commission Implementing Regulation (EU) No 668/2014.

Protection of the distinctive signs of political parties

Outside the business activity, the protection of the distinctive signs against the risk of confusion aims, not to guarantee economic interests, but to protect that set of values and aims pursued by the group through its participation in collective life. In relation to political parties, in particular, the protection of identity, summarized in the name and distinctive signs, finds its constitutional basis in Articles 2, 21 and 49 of the Constitution and expresses the need to avoid, precisely in relation to public debate, confusion, as regards the elements that characterize them as autonomous centers of expression of ideas and actions.

In this sense, the Italian Supreme Court ruled in its decision no. 11635, filed on 16 June 2020, by which the Court upheld the appeal brought by the Associazione Alleanza Nazionale and the Fondazione Alleanza Nazionale against the association Movimento Sociale Italiano – Destra Nazionale – Nuovo MSI.

Cyprus: new trademark law approved

On 05.06.2020 the Republic of Cyprus adopted the new Trademark Law, published on 17.06.2020. The European Intellectual Property Office (EUIPO), within the framework of the European Cooperation Programme (ECP2), has actively participated in the achievement of this goal, offering legal assistance throughout the process of drafting the new text.

Among the topics addressed in the new Cypriot Intellectual Property Act are included:
– the transposition of Directive (EU) No 2015/2436;
– the introduction of the multi-class system;
– the discontinuation of the need for the power of attorney document;
– new paper applications;
– fees.
Cyprus’ new Trademark Law has simplified the whole application and registration procedure. Deadlines have been introduced for the completion of opposition, cancellation and revocation procedures and putting an end to excessively lengthy processes.

Influencer marketing and unlawful use of trademarks

By judgment of February 4, 2020, the Court of Genoa faced the issue of a well-known fashion company and its designer who had repeatedly published on their respective Instagram profiles contents in which footwear and clothing products were combined with luxury cars (with the related intellectual property rights in the foreground).

The Court found that the positioning of the products suggested the existence of a (non-existent) relationship between the clothing brand and the car manufacturer. All of which led to unlawful use of the latter’s trade mark.
This is one of the first social applications of the new Article 20(1)(c) of the Italian intellectual property code. The provision now provides that it is unlawful to use a well-known trademark also for purposes other than that of distinguishing goods and services where without due cause it takes unfair advantage of the distinctive character or repute of the trademark.

Although the Court of First Instance did not consider the use of the trademark to be distinctive, it held that there is a commercial use which, in the context of the activities of influencers, is lawful only if authorised by the proprietor of the distinctive sign or in cases where the images displayed may communicate – to the public – a meaning other than advertising and commercial meaning, that is to say, they are descriptive of scenes from the life of the influencer or of third parties. Such lawfulness would derive from the obvious consideration that the publication of scenes of everyday life imply the inevitable display of the distinctive signs of the products normally used by the represented subject to perform the published action.

Unified Patent Court: AIPPI in favour of Milan’s nomination

The International Association for the Protection of Intellectual Property has expressed its support for the nomination of Milan to host a Division of the Unified Patent Court.
In the document released, AIPPI, after recalling that Italy is among the signatories of the agreement establishing the Unified Patent Court signed on February 27, 2013 and subsequently ratified following the entry into force of Law no. 214 of November 3, 2016, stresses that this agreement has not yet entered into force. Germany, in fact, the country with the highest number of European patents in the year prior to its signature, has not yet validly ratified it.
The instrument of ratification has in fact been declared null and void by the German Constitutional Court due to defects in the adoption procedure.

Preventing new arguments before the EU Court: the Court of Justice ruling

The CJEU has ruled on the range of the review to be carried out by the EU General Court on the decisions of the Boards of Appeal of EUIPO in the EU trademark registration proceedings. The specific issue raised was examined by the CJEU in its judgment of June 18, 2020 (case C 702/18 P).
In the case at hand, the EU General Court had found the arguments of a party to opposition proceedings inadmissible. These elements were related to the allegedly weak distinctive character of the earlier trademark, not raised before the Board of Appeal. The CJEU overturned the judgment of the General Court, finding an error of law in its decision of inadmissibility.

In particular, according to the Court:
– the elements which may be validly submitted for assessment by the General Court depend on the subject-matter of the dispute before the Board of Appeal;
– the Board is nevertheless required to rule on all questions which, in the light of the parties’ arguments, are necessary for a proper decision;
– the assessment of the inherent distinctiveness of the earlier mark constitutes a matter of law necessary to ensure a correct decision, so that the bodies of EUIPO are obliged to examine that question, if necessary of their own motion.

Is Brompton’s bike eligible for protection under copyright law?

The Court of Justice of the European Union has ruled on the request for a preliminary ruling concerning the well-known folding bike model, called Brompton.
The decision is set out in Judgment C 833/18 of June 11, 2020, in which the creator of the folding system and a Korean company, which markets similar bicycles, are opposed.
The question which led the referring court to refer the matter to the Court of Justice is whether a bicycle, whose folding system was protected by a patent which has now expired, can be classified as a work protected by copyright.
According to the ECJ, it should only be assessed whether, through the shape of the product, its author has expressed his creative capacity in an original way. The existence of an earlier patent is relevant only where it would adversely affect that assessment.