[Guest post] Beware of Gucci’s “G”: Italian Supreme Court reminds Florence courts that well-known trade marks enjoy enhanced protection

The IPKat is pleased to host the following contribution by Katfriend Gabriele Girardello on a recent decision (27217/2021) of the Italian Supreme Court which has reminded everyone, including the Florence Court of First Instance and Court of Appeal, that trade marks with a reputation are in principle eligible for protection irrespective of any risk of confusion. The Court did so in a case concerning Gucci and some of its 'G' trade mark registrations [the indication of the actual trade mark registrations have been redacted from the text of the decision, and so has the defendant's own sign].

Here's what Gabriele writes:

Beware of Gucci’s “G”: Italian Supreme Court reminds Florence courts that well-known trade marks enjoy enhanced protection

by Gabriele Girardello

Guccy Kats

Readers of this Blog are all likely to be very skilled IP experts, whether as practitioners, legal specialists or Judges. Hence, they are certainly well aware of the so-called “enhanced protection” enjoyed by well-known trade marks against junior signs.

As we know, in fact, in Europe when assessing both (i) the distinctiveness requirement of a trade mark in the face of an earlier registered well-known trade mark and (ii) the possible infringement of a well-known trade mark by a junior sign, the evaluation should not necessarily be limited to an assessment of likelihood of confusion between signs. When evaluating distinctiveness and infringement the interpreter will take into account also (a) the possible prejudice for the well-known trade mark deriving from the registration/use of the junior sign and (b) the possible unfair advantage that the applicant/owner/user of the posterior sign might enjoy because of the existence of and link with the earlier well-known trade mark.

The Italian rules applicable to this aspect are aligned to those of the rest of Europe, since Article 12 (dealing with distinctiveness) and 21 (dealing with infringement) of the Italian Industrial Property Code were and are derived from EU Directives (originally CE 89/104, now 2015/2436 Articles 5 and 10 respectively). As such, they provide that a trade mark that has a reputation protects its owner against a junior mark when a use of the latter without due cause may imply blurring, tarnishment, or ‘free-riding’ of the repute of the earlier well-known trade mark, as per (a) or (b) above.

All the above said, Italian Courts (in this case those of the Tuscany area, namely Florence Court and Florence Court of Appeal), notwithstanding being rather accustomed to examining these kinds of issues, sometimes need to be reminded of the special status of well-known trade marks.

With a ruling on 7 October 2021, the Italian Supreme Court had precisely to do that: siding with Gucci, the Supreme Court issued its decision further to a final appeal brought by the Gucci maison against a small company that had obtained two national Italian trade marks that contained a “G” shaped in slightly different form with respect to the famous one that identifies Gucci and that had succeeded at first instance and on appeal against the fashion giant (which by the way was founded in Florence and so must have been really annoyed to have lost in their home-court!).

From the facts of the case it seems that the First Instance Court and also the Court of Appeal had applied a very unsophisticated (and therefore legally unsustainable) test, in particular for assessing the distinctiveness of the junior sign. In particular the lower courts had affirmed that, since the exact appearance of the Gucci trade mark was well-known to the final consumer, the latter would not have fallen into an error in the light of the differences of the junior mark and so there was no likelihood of confusion.

The Supreme Court comprehensively took the view that the Court of Appeal (and also the Florence Court of First Instance) had got it wrong and stated (my own translation): “it is utterly irrelevant that those who are used to buying original products may not be misled with regard to the origin of the product bearing the trademark of the infringer, since such product can be addressed to those consumers who consciously choose it not for its intrinsic decorative or material characteristics, but only for its strong resemblance to the "famous" one, perhaps to "pass it off" as the original to less attentive or less qualified less attentive or less expert in recognizing famous brands.”

As a result, the Supreme Court sent the matter back to the Court of Appeal that will now have to reassess the possible invalidity of the junior trade mark by applying the enhanced protection test.

Needless to say Gucci will feel relieved (and so will all other owners of trade marks with a reputation!).