On 2 February 2010 (decision No 4217/10) the Italian Supreme Court issued a decision reinforcing the protection for CTM’s under the Italian criminal law, with a finding that protection of CTM’s under the Italian Criminal Code must be considered as commencing from the date of the application such that ‘counterfeiting’ of a CTM may also occur when trade mark is still in the process of being registered.

Background

The case relates to the famous Rubik’s Cube device mark, owned by Seven Towns Limited and registered as CTM No 162784 on 6 April 1999. The defendant, an Italian company, had produced and put on the market fake “Rubik’s cubes” under the name “Games and MORE”, which had consequently been seized pursuant to a preliminary order by the Public Prosecutor of Novara (a city in the Piedmont region, to the west of Milan) of 13 May 2009.

On 9^th June 2009 the Court of Review of Novara annulled the seizure of the fake Rubik’s cubes and dismissed the counterfeiting claims against the Italian company, holding that the CTM in relation to which the preliminary measure was applied, should never have been registered but instead should have been refused on absolute grounds since it consisted of a mere shape necessary to obtain a technical result. According to the Court of Review, it was not possible for the defendant to be charged with counterfeiting in the circumstances.

The Novara Public Prosecutor appealed against the decision of the Court of Review.

With specific reference to the CTM, a competitor of Seven Towns, Simba Toys GmbH had already instigated cancellation proceedings before the OHIM against the 3D mark without success, requesting that the CTM be invalidated pursuant to almost all the absolute grounds for refusal established in Article 7 CTMR (in particular, pursuant to Article 7(1)(a) up to Article 7(1)(e)(iii) CTMR).

This cancellation request was however later rejected. The OHIM Boards of Appeal likewise dismissed Simba Toys’ appeal, confirming the decision of the Cancellation Division. The case is now pending before the General Court (Case T-450/09) as, on 6 November 2009, Simba Toys lodged an action against OHIM seeking the annulment of the decision of this Board of Appeal.

The Decision

The Italian Supreme Court held that the Court of Review based its interlocutory decision on a substantial declaration of invalidity of the CTM, without however having acquired all necessary elements to do so and without sufficient analysis of the applicable law. For example, no reference was made in the decision to the administrative proceedings before the OHIM. In any event, the Court of Review did not (nor could it) develop extended reasoning in its decision in the absence of a preliminary discovery phase.

In conclusion, the Supreme Court confirmed that the protection of trade marks, such as CTMs, as well as designs under the Italian Criminal Code must be available from the date of application for a CTM in accordance with the requirements by law, insofar as this formally provides knowledge of the description of and/or designs of the exclusive rights claimed and therefore the means to unlawfully reproduce the same.

Under the Italian IP Code, pursuant to its Article 15 (2), distinct from Article 9 (3) CTMR, the effects of a trade mark registration commence from the filing date of the application. Article 132 IP Code further expressly establishes that preliminary urgent measures may be issued even if the trade mark application is still in the process of being granted, provided that the application for registration has been made accessible to the public or alternatively has been served on interested parties.