Barilla wins long pillow fight

Early this year, a three-year long “pillow fight” engaged by Barilla came to an end with a ruling in favour of the Parma food giant (Milan IP Court, decision no. 830/2018 of 25 January 2018).*

In 2014, a small textile business, I. F., started manufacturing throw pillows reproducing the shape of Barilla’s most popular breakfast cookies, marketing them with the corresponding names — all Barilla’s registered trademarks. Barilla sent a cease-and-desist letter, but the only response from the defendant was to add the suffix “–oso” to the name of its pillows (e.g. from “Pan di Stelle” to “Pandistelloso”).

Barilla felt it wasn’t enough and filed a trademark infringement and unfair competition lawsuit, the latter largely based on the imitation of the products’ shapes, before the Milan IP Court.

The defendant objected that Barilla’s trademarks had not been registered in class no. 24 (textile goods) and that their scope of protection should not extend outside the food sector, since they were not famous. As to the shapes of its pillows, the defendant contended that they were common in the confectionery industry; in the consumers’ mind, according to the defendant, any association between Barilla’s cookies and Barilla itself was determined by the cookies’ packaging, not by their shape.

In fact, I. F. filed a counterclaim of unfair competition and bad faith in negotiations, claiming that Barilla had misappropriated the idea of selling cookie-shaped pillows and engaged in the same activity only after the defendant had disclosed its early project in the hope of establishing a business partnership.

Pending proceedings on the merits, Barilla successfully sought urgent relief against the defendant, which was enjoined from marketing the products in suit.

In its ruling on the merits, the Milan IP Court has upheld both Barilla’s claims of trademark infringement and unfair competition against I. F.

With regard to the trademark infringement claim, the Court drew on Community and national case-law establishing that a trademark has acquired a “reputation” — and, therefore, enjoys protection extending to non-similar products or services if detrimentally affected without due cause — when it is known by a significant part of the public, taking into consideration the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made in promoting it.

In this regard, the Court found that, on one hand, the Barilla trademarks in suit fulfilled these conditions in the Italian territory, and, on the other, that the defendant’s use of Barilla’s trademarks had taken unfair advantage of their repute, considering the relevant circumstances, i.e. their use in connection with products that mimicked the entire line of Barilla’s breakfast cookies. Consequently, Barilla’s trademark rights had been infringed.

The variants of the trademarks with the suffix –oso, adopted after Barilla sent a cease-and-desist, have been found by the Court to be mere declinations of the trademarks in suit.

The Court reached similar conclusions with respect to the use by I. F. of the same Barilla trademarks as meta-tags, domain names and keywords for indexing content on social platforms and search engines, found to be infringing. In the last respect, the judges quoted the well-known Google France, L’Oreal and Interflora case-law to rule that the use of those particular keywords by the defendant was not intended to present web users with commercial alternatives to Barilla’s products, but only to parasitically exploit the repute of Barilla’s trademarks, suggesting in the process the existence of a commercial relationship with the legitimate owner.

The imitation of shapes and trademarks of the plaintiff’s entire breakfast cookie line was found by the Court to also be an act of unfair competition. The defendant had tried to deny the very existence of a competitive relationship between the two litigants, relying on the diversity of the respective markets. The Court, however, found that the defendant’s products, while not meeting the same needs as those of the plaintiff, addressed the same public, and noted that the defendant itself had filed a counterclaim of unfair competition against the plaintiff, thus acknowledging the latter as a competitor.

The judges chose not to address the question of whether the shape of Barilla’s cookies could be protected as unregistered shape trademarks, stating that it would be inconsequential to the final ruling.

Barilla’s direct marketing of throw pillows reproducing its own cookies was found to be a legitimate form of exploitation of the plaintiff’s rights, in the absence of any evidence supporting the defendant’s claim that Barilla had acted in bad faith in negotiating an agreement. The related unfair competition counterclaim was thus rejected.

In light of the above findings, the Court issued against the defendant a definitive injunction from manufacturing and marketing the infringing products and from using Barilla’s trademarks, subject to a penalty of 100 Euro for any breach of the order. The defendant was further ordered to recall from the market all infringing products and to pay damages and legal expenses to the plaintiff. The damages were calculated on an equitable basis, taking into account the lack of cooperation by the plaintiff in disclosing its accounts, and thus quantified at 150,000 Euro. Finally, the defendant has been ordered to pay for the publication of the ruling in two of the most prominent Italian newspapers.

The ruling is subject to appeal.

* The author has had no involvement in the case being discussed.