The Brescia IP court on descriptive fair use of trademarks and “late reaction”

The Brescia IP court recently issued two interim decisions on descriptive fair use of a trademark by the reseller of genuine goods.

The parties in the preliminary proceedings (and in the subsequent preliminary appeal proceedings) were Montblanc Italia and one of the companies of the Giustacchini group, reselling office products in Italy including original products from Montblanc. Proceedings were commenced by the latter: although Giustacchini legitimately retails original Montblanc goods, the claimant argued that it should not use inside its shops the small promotional billboards showing the Montblanc trademark which it was in fact using. According to the claimant, such use of its trademark would in fact infringe its rights. Based on this, Montblanc requested the court to enjoin the defendant from using those promotional billboards.

In joining the proceedings, Giustacchini opposed that its use of the billboards in issue constituted fair descriptive use of the trademark, which is expressly permitted to resellers of genuine goods pursuant to Art. 21 of the Italian IP Code (corresponding to Art. 12 CTM Regulation). Judge Mr Del Porto accepted these arguments and dismissed the motion submitted by Montblanc, also ordering the latter to pay Giustacchini’s legal fees, finding that “the fact that the Montblanc goods are shown in a showcase including also other goods, bearing different trademarks, makes it evident that Giustacchini uses the Montblanc trademark in a fair descriptive way, to the sole aim of better presenting the (legitimately resold) Montblanc items”.

The above interim decision was then appealed by Montblanc. Again, however, by decision of 17 December 2013 (issued by a panel of three Judges: President Mr Rosa, Mrs Baldissera and Mr Nanni), Montblanc’s claims were dismissed and the company was ordered to pay Giustacchini’s legal fees. The panel found that “the actual way in which the promotional billboards bearing the “Montblanc” trademark are used by Giustacchini constitutes fair descriptive use of the trademark pursuant to art. 21 IP Code”.

The decision in the interlocutory appeal also addressed the issue of the claimant’s “late reaction” against the alleged infringement, which, according to a large part of our case-law, would show the lack of the “irreparable harm” requirement (as we already explained here in our blog). The decision in issue is consistent with that case-law, finding that “the lack of any urgency, requiring and justifying the interim measure, can be significantly inferred from the delay in the submission of the motion by Montblanc. In facts, months before submitting the motion, Montblanc sent a warning letter to Giustacchini, without later taking any legal action for a long time. In this scenario, Montblanc’s inactivity clearly shows the lack of any irreparable harm”.