Milan IP Court does not turn a blind eye on Flirting trademark

With an order dated 28 December 2015, the IP division of the Milan Court granted provisional protection to the “wink” trademark characterising the Flirting collection of well-known fashion blogger and designer Chiara Ferragni.

The trademark holder (the company Mofra Shoes, which has a partnership agreement with Ms Ferragni) filed a preliminary seizure and injunction application with the Court, complaining that its trademark was being reproduced on two T-shirts, sold in pairs and stamped respectively with the picture of a closed and an open eye, graphically identical to those forming its registered trademark. Such conducts, the applicant claimed, made for a prima facie case of trademark infringement and unfair competition.

The company responsible for the sale of the T-shirts fought the applicant’s case, claiming, among other things, invalidity for lack of distinctiveness of the trademark in suit, arguing that it sought to monopolise a universal form of communication such as the “wink”. It claimed furthermore that, in any event, there could be no infringement or unfair competition, since the ideological and expressive core of the applicant’s trademark was the simultaneous presence of both eyes, while its T-shirts depicted a single eye and of course could not be worn simultaneously; thus, any likelihood of confusion and/or association between the two competitors was ruled out.

The Judge, however, took a different view. On the issue of distinctiveness, he observed that, though the “wink” gesture as such may not be monopolised by a single subject, it can be graphically represented in countless different ways, so that protection as a trademark can be granted to a sufficiently distinct representation of it. In this respect, he found that the Flirting sign possessed a sufficient degree of distinctiveness, rendering the depiction of an open and a winking eye as a “stylised and imaginative” representation.

On the issue of infringement, having noted the substantial graphic identity of the images printed on the defendant’s T-shirts with those forming the applicant’s registered trademark, the Judge observed that the pair of T-shirts was offered for sale in a single pack and that the images stamped on them were accompanied by the phrase “an eye / for an eye”, divided between the two and readable in full by placing them one next to another. The seller was thus suggesting that they be worn by two people at the same time, so that, when they were standing side by side, both the “wink” and the sentence could be seen as a whole by the observer. It followed, in the Judge’s view, that the defendant used the applicant’s trademark in its entirety in the course of trade and was, therefore, actually infringing the applicant’s trademark rights.

On those grounds, the Judge granted preliminary seizure and injunction against the infringer, subject to a penalty for any violation of his order.

Note to readers: the order is subject to direct appeal; in any event, due to the summary nature of the proceedings in this case, it could be overruled by a decision issued following ordinary proceedings.