The IP Court in Brescia, Italy, has recently issued two interim decisions on descriptive fair use of a trade mark by the reseller of genuine goods.

The parties in the preliminary proceedings (and in the subsequent preliminary appeal proceedings) were Montblanc Italia and a company in the Giustacchini group, which resold office products in Italy that included original products from Montblanc. 

Montblanc commenced trade mark infringement proceedings. While Giustacchini legitimately retailed original Montblanc goods, Montblanc argued that Giustacchini should not use inside its shops the small promotional billboards showing the Montblanc trade mark: such use, said Montblanc, amounted to infringement. Injunctive relief was sought . 

No, said Giustacchini: use of the billboards constituted fair descriptive use of the trade mark, which is expressly permitted to resellers of genuine goods under Article 21 of the Italian IP Code (corresponding to Article 12 of the Community Trade Mark Regulation). The judge agreed and dismissed the motion submitted by Montblanc, adding:

“the fact that the Montblanc goods are shown in a showcase including also other goods, bearing different trade marks, makes it evident that Giustacchini uses the Montblanc trade mark in a fair descriptive way, to the sole aim of better presenting the (legitimately resold) Montblanc items”.

Montblanc appealed in vain.  In its decision of 17 December 2013, a three-judge panel dismissed Montblanc’s claims and ordered the company to pay Giustacchini’s legal fees, saying:

“the actual way in which the promotional billboards bearing the “Montblanc” trade mark are used by Giustacchini constitutes fair descriptive use of the trade mark pursuant to art. 21 IP Code”.

The appeal decision also addressed the issue of Montblanc's “late reaction” against the alleged infringement:

“the lack of any urgency, requiring and justifying the interim measure, can be significantly inferred from the delay in the submission of the motion by Montblanc. In facts, months before submitting the motion, Montblanc sent a warning letter to Giustacchini, without later taking any legal action for a long time. In this scenario, Montblanc’s inactivity clearly shows the lack of any irreparable harm”.

Source: "The Brescia IP court on descriptive fair use of trademarks and “late reaction”", posted earlier today on the Callegari Martini Manna website, here