The Nexthing trademark does not infringe the Next trademark, says the IP Court of Rome
By interim order of March 17, 2021 in proceedings with docket no. 64788/2020, the IP Court of Rome ruled in favour of the petitioner Nexthing Ltd which had requested an urgent declaration of non-infringement, by its homonymous word and figurative trademarks, of the NEXT (word and figurative) trademarks belonging to the defendant Next Holding SpA. The figurative marks in question are reproduced below.
The proceeding stemmed from the fact that Next had opposed the registrations of the Nexthing trademarks. Hence the latter’s interest in obtaining confirmation of the legality of the same, a confirmation that came precisely from the decision in question. The Judge, Dr. Martucci, based his conclusion on the fact that the English term “Next”, “which, in its widespread use in Italy and in the world, is synonymous with future, progress … appears in itself lacking a strong distinctive capacity, it being … widely used as a distinctive sign of companies and services offered on the market by various institutions“. Consequently, “the use of the term Next alone is not suitable for identifying the defendant companies, nor the services they offer, if not combined with other graphic and word elements“.
In this context, the Judge therefore believed that the defendant company Next Holding SpA could not claim the exclusive use as a trademark of the term Next in isolation, nor, consequently, could it prohibit the applicant from using it within its own Nexthing trademarks: these appeared unable to generate confusion in the public with the opposing brands, given the differences between them.
The Judge also rejected the defendant’s defense on the alleged lack of Nexthing’s interest in the action and the lack of the requirement of periculum in mora, aka the urgency to take precautionary measures. In fact, the order noted that “the uncertainty about the validity of the claimant’s trademarks and the legality of their use is certainly capable of grounding the interest in an urgent declaration, the deferment of which until the outcome of the merits proceedings could jeopardize the planning of the Nexthing Ltd company in respect of its advertising campaign and future investments. Periculum in mora is not excluded by the fact that the claimant already started using the trademarks at issue, as this requirement does not subsist only in cases in which the claimant awaits the outcome of its motion to start using the trademark, but also in cases where, despite having started using it, the time necessary for the declaration of non-infringement in merits proceedings could limit the claimant’s promotion of the brand and its long-term investments“. On the difference between the requirements of the interest in an action and the periculum in mora, however, I refer to another decision that I commented upon here on this blog.
The order, thus concluding in favor of Nexthing, condemned Next to pay the legal costs, which it settled at € 4,500.00 plus 15% for general expenses, VAT and 4% mandatory contribution to lawyers’ social security fund.