The Court of Venice, by order dated 26.11.2021, granted protection to the trademark “Cleopatra”, registered by a Croatian entrepreneur and licensed by her to her company which is active in the production and marketing of depilatory products.
The case was brought as a precautionary proceeding against a competitor who used the trademark “L’oro di Cleopatra” for depilatory products. The petitioners claimed that this constituted a clear violation of their trademark, as well as an act of unfair competition pursuant to article 2598 of the Italian Civil Code; they therefore requested that the defendant be ordered to cease use of the contested trademark and withdraw the products bearing it from the market.
The respondent, in defence, , firstly objected to the validity of the plaintiffs’ “Cleopatra” trademark due to a lack of distinctiveness, since it consisted of the “name of a well-known historical figure and emblematic of a category of goods” and therefore “lacking the minimum requisites of originality such as to allow legal protection”. Secondly, the respondent argued the lack of likelihood of confusion between the two trademarks, given: i) the presence of sufficient differentiating elements, such as the phrase “l’oro di” and the name of the respondent; and ii) the difference in price of the products marked by the two trademarks and the different reference public. The respondent also stated that “L’Oro di Cleopatra” (i.e. Cleopatra’s Gold) was a descriptive term, and therefore freely usable, as it was the common name of an ancient depilatory technique, which was believed to have been invented by the Egyptians and also used by Queen Cleopatra.
In deciding the dispute, the Court of Venice first of all excluded that the trademark Cleopatra was devoid of distinctiveness and therefore void, stating that a sign is such only when it is “exclusively descriptive of the goods and services for which it is registered, or descriptive of the characteristics of such goods and services, or when its use in the course of trade is absolutely generalised to indicate those goods and services”. In the present case, the Court found that the name “Cleopatra” was not in any way descriptive of the goods or services for which the trademark was registered, nor could it allude in any way to depilation techniques or depilatory products.
The Court then compared the signs of the parties in order to verify the existence of the infringement, noting that: i) from a visual and phonetic point of view, the two signs are very similar, despite the presence of other elements, since the word most prominently displayed in the respondent’s mark is in any case the sign “Cleopatra”, identical to that of the petitioners; ii) also from a conceptual point of view there is a marked similarity, given the reference of both signs to the world of aesthetic care and beauty. Having ascertained the similarity between the conflicting signs, the Court assessed the likelihood of confusion on a global basis, and found that there was infringement, since although the petitioners’ sign was not a “strong” sign, in that it alluded to the idea of personal care, the similarity between the signs and the use of the same to distinguish the same type of goods means that there is a likelihood of confusion for the relevant public. The Court also considered irrelevant, in order to exclude the likelihood of confusion, any difference in price or public, stating that such differences could be easily linked, by the relevant public, to different “lines” of the product or service offered by the same company or by associated companies.
The Court also held that the requirement of risk in delay, required for the issuance of the urgent measure, was met, since the continued infringing use of the trademark by the respondent could compromise the already low distinctive value of the petitioners’ “Cleopatra” trademark.
On this basis, the Court of Venice, having ascertained the infringement of the international trademark “Cleopatra”, prohibited the respondent from the use of the contested trademark, ordering him to remove – e.g. from Facebook and other portals – the advertisements relating to its products and to withdraw them from the market, setting a penalty for each day of delay in complying with the measure and ordering the respondent to pay the costs of litigation.