The Court of Milan on infringement of a complex trademark

(the Italian version of this post is also published on Diritto24 of Il Sole 24 Ore)

With ruling no. 10374/13, the Court of Milan issued its decision on the protection of a complex trademark consisting of the image of a lock with a particular decorative door latch, accompanied by the patronymic “Gianfranco Lotti” (the “Trademark”).  The Trademark, registered both at a national and at an international level, was enforced by B.M.B. Bottega Manufatturiera Borse (“B.M.B.”) and GLF International s.r.l. (“GLF”), i.e. respectively the Trademark licensee and holder, which manufacture and commercialise leather goods and have been using the Trademark since 1992 (jointly the “plaintiffs”). The infringement was allegedly committed by the multinational company Zara, namely Zara Italia s.r.l. and its Spanish parent company Inditex Industria del Diseño Textil S.A. (“Inditex”), which used a similar lock with a door latch on their Zara bags. The defendants, however, claimed that the plaintiffs’ lock was not eligible for protection as a trademark because it was devoid of distinctive character – it having been extensively used in the global leather goods industry by many players since the 50s – and that in any case the affixing of their Zara trademark on the bags would have excluded any infringement. Moreover, Inditex preliminarily objected that it lacked the capacity to be sued, claiming that it was not engaged in the commercialization of the bags in issue.

By the ruling in issue, the Business Chamber of the Court of Milan firstly recalls that, according to consistent case-law, protection of a complex trademark “is to be granted both to the entire trademark and to its individual parts, where the latter have alone a distinctive and individualizing capacity, there being no room for considering the word element as having an automatically dominant character”. In the present case, therefore, protection is granted to the lock in issue alone (without the patronymic “Gianfranco Lotti”) given “the originality and fantasy existing in such a use, considering the combination of the lock with goods which have nothing to do with doors, windows et similar, they being in fact leather items, costume jewelry, accessories and luxury textiles. Such sign holds a strongly distinctive connotation, to the point of being often identified as the icon of the company” as demonstrated by the documents submitted by the plaintiffs: “mostly magazine articles which cannot be contested as regards contents or dates” proving among other things “the massive use of the “lock” over years in many products and promotional / advertising material” of the plaintiffs.

In light of the above, the Business Chamber finally states that the lock with a decorative door latch included in the plaintiffs’ complex Trademark deserves protection itself against Zara’s use of it, since it constitutes a “distinctive sign capable to establish a link, in the consumer’s mind, with the plaintiffs and the products bearing the “Gianfranco Lotti” patronymic” (having in addition the latter, according to the Judges, “a certain reputation also at international level, provided that B.M.B. opened many stores in elegant shopping malls and in several airports”).

In addition, further than trademark infringement, the Judges of the Court of Milan state that Zara’s conduct “also meets the requirements of the so called post-sale confusion, by creating the actual possibility that (potential) buyers seeing another consumer wearing a Zara’s bag are led to believe that the same is a model by Lotti, or at least that there is an agreement and/or a link between Zara and him, for example in the framework of a quite reasonable strategic plan by Lotti to enter into a mid-level and highly widespread target-market”. Consequently, the Court also finds that Zara committed unfair competition against B.M.B.

Given the above, and after rejecting Inditex’ objection that it lacked the capacity to be sued (being Inditex both Zara Italia’s parent company and the holder of the www.zara.com website on which the contested bags were advertised and sold), the Court therefore ascertained the unlawful acts committed by Zara. As a consequence, it enjoined  Zara from continuing them in the whole European Union (given the international registration for the Trademark), establishing penalties for the case of non-compliance and delay in compliance with the injunction itself. Finally, the Court ordered the market withdrawal and destruction of the counterfeit bags, ordered that the decision be published on “Vogue” magazine at Zara’s costs, and stated that proceedings had to continue in order to determine damages and legal costs to be refunded to the plaintiffs by Zara.