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30 April 2018
Italian case law on trademarks deemed contrary to public order and accepted principles of morality is fully consistent with EU case law (for further details please see "Is figurative mark containing word 'Mafia' contrary to public policy?"). Two rulings by the Specialised IP Division of the Court of Milan are of particular note in this regard.
In the first ruling, the court held that a trademark was contrary to public policy because it included the term 'veggenti' ('clairvoyant'), referring to the prohibition on the exercise of the corresponding activity contained in Article 121, last paragraph of the Italian Public Security Law. In the view of the court, this provision implied that a mark which expressly referred to that activity and which was intended to be used in the exercise of that activity was contrary to public order.(1)
The second ruling considered that a mark consisting of a letter of the alphabet, stylised in such a way as to be perceived as the representation of a couple engaged in a sexual act, was contrary to common morality. The court stressed that "this transposition and the resulting double meaning confer the sign its attractiveness, which can be assessed in a distinctive key", thus enhancing the importance of the message conveyed by the mark as perceived by the public.(2) A different view was taken by the Court of Bari in its decision of July 12 2007, which held that the obscene reference contained in the trademark was only "indirect", and granting that trademark protection against a sign containing the same indirect reference. The latter decision, however, was strongly criticised by Italian scholars.(3)
It is clear that, for both the Italian case law and scholars, the criterion of public perception must be applied in the same way in order to assess the validity of a mark and verify whether other signs interfere with it. Scholars, in particular, consider that the ban on the registration of trademarks that are contrary to public order and the penalty of revocation for trademarks which become unlawful (and, in particular, those which become misleading as to any matter of importance for the public), are key principles of trademark law, which balance an owner's right to exploit the full potential of the message conveyed by its trademark with the right of consumers and competitors to the correctness of that message.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (email@example.com). The IP Law Galli website can be accessed at www.iplawgalli.it.
(3) See Casaburi, Note to Trib Bari, July 12 2007, in Foro it, 2007, I, 3268 ff; and Galli, "Lo Statuto di non decettività del marchio. Attualità e prospettive di un concetto giuridico", in "Studi in memoria di P Frassi", Milan, 2011.
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