The IP Chamber of the District Court of Milan recently issued a key decision (No 11637/2010) on the protection of trademarks with a reputation in Italy and the possibility of partial revocation for non use of such marks.

Background

The case concerns the well-known DAMIANI brand for jewellery (class 14 goods), owned by the defendant, jewellery company Damiani International. The latter’s mark DAMIANI had been filed in Italy in the eighties for (amongst others) clothing in class 25 and regularly renewed.

The claimant, Dutch company Creative Brands  -  belonging to the German Group Peek & Cloppenburg, the international chain of fashion department stores  - , owns an identical DAMIANI Community trademark (No 1070606) for clothing in class 25, filed in 1999 and registered in 2000.

Creative Brands claimed the partial revocation for non use of the defendant’s DAMIANI mark for clothing in class 25.

Decision

The Milan Court upheld the defendant’s thesis that the reputation of a mark not only grants an enhanced protection (i.e. beyond the scope of registration, including against use for dissimilar goods or services) but may also function as a safety helmet for maintaining the protection for goods or services covered in the registration but in relation to which there has been no or insufficient use.

In addition, in line with the principles established by a previous decision of the Rome IP Court of December 8, 2008 (concering a partial revocation claim in relation to a well known fashion brand with reference to magazines in class 16), the Milan Court affirmed that the extent of the enhanced protection does not automatically cover all possible goods or services but instead should cover the goods and services in the so-called “virtual development sphere of the company’s activities”, i.e. in which the mark owner’s future or potential interest to develop is to be reasonably expected according to industry practice.

In conclusion, the Court held that regardless of possible non use of the DAMIANI brand in class 25 as well as regardless of an arguable similarity of goods, its revocation in this class could in any event not be uphold since a (future) brand stretching move of a company operating in the luxury jewellery business into the clothing business is wholly reasonable. The claimant was further ordered to pay the costs of the proceedings.

In light of the above, the provision on partial revocation for non use of a mark with a reputation cannot be applied despite non or non sufficient use, with reference to products that may cover a sector in which it would be reasonable that the brand owner may expand in the future.

Spicy detail, in the meantime (in 2008), the defendant lodged a request for revocation against the claimant’s CTM for non use. In 2009, however, the OHIM Cancellation division rejected such request considering that the CTM proprietor had proved genuine use in Germany with reference to jackets and, therefore, clothing. In its decision of January 11, 2011 (Case R 876/2009-4) the OHIM Board of Appeal has now confirmed this decision.