Sweet! (or not?): cookie-shaped cushions without trade mark owner's permission

Pan di Stelle

Are you familiar with cookies like Pan di Stelle, Galletti, Abbracci, or Ringo? If you are Italian or have lived in Italy you surely are, but also if your favourite supermarket stores Italian products it is most likely that you have tried these extremely popular sweet products once … or many times.

While reading the blog of specialist IP law firm Martini Manna, I learned about a ‘yummy’ case concerning indeed the aforementioned cookies and … cushions shaped like them!

In a decision issued a few weeks ago (sentenza 830/2018), the Court of First Instance of Milan (Tribunale) tackled whether Barilla could oppose the making and marketing of cushions by the defendant shaped like the former’s famous cookies.

Unsurprisingly, the Court ruled in favour of the claimant. But on what grounds did it achieve this decision?

Background

Barilla owns a number of EU and Italian trade marks, as well as a number of distinctive (unregistered) signs corresponding to the shapes of products like Pan di Stelle, Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole.

In 2013 it was approached by the main defendant with a proposal of a collaboration to create together cushions shaped like Barilla cookies (and eventually all Barilla products, including pasta-shaped cushions). Although Barilla eventually decided against such collaboration, the proponent decided to go ahead anyway and started making and commercializing such cushions.

Barilla therefore brought an action before the Milan court, claiming that with its conduct the defendant had infringed both its trade mark rights and rights in other distinctive signs, and committed acts of unfair competition (including parasitic unfair competition).

In turn, the arguments of the defendant were that:

• The shapes of its cushions resembled shapes that are common in the bakery sector. Hence, the shapes of Barilla’s cookies would not be distinctive per se: consumers would rely on the packaging of the cookies – rather than their shape – to associate the products with the Barilla trade marks;
• Barilla’s trade marks are not registered in Class 24 of the Nice Classification for textiles and, since they are not well-known trade marks, they cannot enjoy the strenghtened protection for well-known trade marks;
• Barilla itself had acted contrary to the principles of fair competition in that, following the refusal to enter a collaboration with the defendant, it had launched a contest in which the prizes consisted of ... cookie-shaped cushions.

The defendant's cushions

The decision

The Court sided with Barilla and held that the defendant had infringed Barilla’s distinctive signs.

More specifically, the court found that the defendant had infringed Barilla’s word marks by commercializing its products under identical signs and – further to Barilla’s cease-and-desist letter – under slightly modified signs, e.g. Pandistelloso, Gallettoso, Rigoloso, etc.

The infringing use of the claimant’s signs was found in relation to the labelling of the cushions, their commercial name, but also metatags, search engine keywords, domains names, and social media ‘hashtagged’-terms. 

With regard to the online use of signs identical to Barilla’s trade marks, the Court recalled relevant case law of the Court of Justice of the European Union (CJEU) – including the decisions in Google France, Interflora, L’Oréal, and Portakabin – and engaged in a discussion of the functions of a trade mark.

It concluded that in the present case the online use of signs corresponding to Barilla’s trade marks was aimed at exploiting parasitically (to use CJEU-jargon, one could say ‘to ride on the coat-tails of’) the reputation and prestige of the trade marks at issue, as well misleadingly suggesting the existence of an association with Barilla.

Turning to the argument that Barilla’s trade marks would not be well-known and therefore nothing could be done in relation to the use of identical or similar signs in relation to dissimilar goods, the Court dismissed it. It held that Barilla’s trade marks should be considered well-known within the meaning of Article 20(c) of the Italian Industrial Property Code, and that the defendant’s behaviour had resulted in the taking of an unfair advantage of their repute. The Court noted that the defendant had copied all the fanciful aspects of Barilla’s cookies, including shapes, colours, and all non-substantial elements.

The Court also found that the defendant’s behaviour amounted to unfair competition within Article 2598 of the Italian Civil Code. In sum, the Court found the defendant liable on all fronts, and ordered it to pay damages for EUR 150,000, as well as covering the costs of litigation.