Protecting IP Rights: Beware Of Potential ‘Boomerang' Effects! Italian First Instance Court Deals With An Interesting Case, Disappointing The Plaintiff

Author:Dr. Felix Hofer (Hofer Lösch Torricelli)
Profession:Global Advertising Lawyers Alliance (GALA)
  1. In February 2016 the IP Section of the First Instance Court (“Tribunale”) in Firenze (Italy) came to deal with some peculiar aspects of IP rights' protection. The case originated from a complaint filed by a restaurant owner against a competitor (originally a potential business partner in a - not concluded - franchise deal), intending to protect its IP rights relating to registered trademarks (TMs) and to its “shop layout,” alleged to be covered by two registered community designs (RCDs).

    1.1. Arguing that he had registered both, a number of TMs - such as 'american graffiti', 'american graffiti country diner', 'american graffiti on the road' and others, similar ones - in class 43 (of the Nice Classification) as well as two RCDs in class 6 (of the Locarno Classification) for 'composite furniture', the plaintiff claimed that the defendant had infringed on his IP rights when choosing and adopting the furniture and the set-up of the competing diner and by making use of terms such as 'finger food', 'special Tex-Mex', 'basket sandwiches', 'frenchontroni', etc. for the dishes offered in the food menu.

    1.2. The defendant reacted by filing a counter-claim, meant to obtain annulment both, of plaintiff's registered trademarks, basically coinciding with the renown US movie "American Graffiti" (of 1973) as well as of the Registered Community Designs (for lack of novelty and of individual character).

  2. The Court in Firenze resolved the case through judgment no. 1112, issued on March 18, 2016 and felt that its evaluations should logically start by examining the defendant's counter-claims.

    2.1. With respect to the requested annulment of the plaintiff's registered TMs, the Court found that the defendant had no proper standing for such counter-claim as he had not been able to substantiate the existence of his 'prior rights'. Therefore, the claim was dismissed.

    2.2. Then the Court passed on to deal with the issue whether it was possible to seek - and obtain - protection of a 'shop layout' like the one alleged by the plaintiff in the specific case.

    On this point the Court found that: - In general terms, the set of a shop or restaurant, consisting of its décor...

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