TRADEMARKS WAR, GUCCI E FERRAGAMO WON AGAINST COUNTERFEIT ACCORDING TO THE COURT OF CASSATION
More protection for the strong brands of haute couture that must defend themselves against the increasingly frequent attacks of counterfeit goods’ producers. The Court of Cassation established it, admitting the complaint by Gucci – against the Chinese Zhou Shaolin, owner of the leather goods shop named «Lorenzo» – and another one by Ferragamo against «Val Vibrata» and «Ripani».
Full protection was granted to Gucci, qualifiable as «strong» and «renowned», not only against counterfeiting cases, but even towards products that are “obviously” inspired by the famous brand. The Court of Cassation, through the sentence nr. 26000, has thus accepted, with reference, the appeal by the haute couture house against a Chinese leather goods company, that, in place of the two “G”, opposed in a convergent sense, had registered two “C”, opposed in the divergent sense. According to the Superior Court in Florence, this wasn’t enough to integrate counterfeiting.
The second trademark, as explained by the judgement of matter, «even if it boldly evokes the symbol of Gucci, it recalled its features using different letters and with a general impression not graphically similar, with variants that couldn’t go unnoticed to the customers of the renowned house». Therefore «Shaolin products, not comparable in quality, were not intended to be “Gucci” but “like Gucci”, exploiting the others’ celebrity, thus exalting it and not already debasing it».
This reasoning was rejected by the Court of Cassation according to which the Territorial Court «where it seems to enhance the evocative intent of the famous “Gucci” company, pursued by Shaolin with its leather products defined “in the manner of …”, it neglects to assess whether the “link” occurs» and «decidedly obliterates that the more the evocation of the earlier mark by the later mark is immediate and strong, the greater is the risk that the current or future use of the later trade mark will take undue advantage from the distinctive character or from the repute of the earlier mark or cause them injury». Without proceeding to the concrete examination of the «three possible violations», that are the prejudice of the distinctive character, of the notoriety and finally the advantage unduly received.
Even Ferragamo is recognized as a «strong brand» and «renowned», and therefore it must be protected against similar products, able to generate confusion in the consumer, and against the «parasitism» integrated by those who gain by exploiting the image of the brand. The Court of Cassation, sentence nr. 26001, has accepted, with reference, the appeal of the Florentine maison against “Ripani Italian leather goods shop”, who had used, as a joint between the shoulder strap and the bag, a hook which reproduced the letter “Omega”, registered by Ferragamo as a three-dimensional mark so-called “Gancini”.
The Court of Appeal of Milan, therefore, will now have to pronounce itself again evaluating if they occur «the conditions concerning the protection of the renowned brand and the “link”, which is a certain degree of similarity between the mark and the sign, because of which the interested public relates or can relate the sign and the mark, establishing a link between them even when not confusing them, to which the application of the protection of the renowned brand must be linked». «And it must, therefore, ascertain – on the basis of the evidence produced by the owner of the mark which is deemed to be prejudiced – if at least one of the sanctioned violations occurs in the specific case, that is a prejudice of the distinctiveness, or a prejudice to the renown and notoriety of the brand, or whether there has been the achievement, even potential, of an undue advantage related to the unlawful use of the later mark, always having regard to the relevant public».