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The Trade Marks and Designs Registration Office of the European Union
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This month, James Nurton talks to Italian lawyer Gabriel Cuonzo about IP litigation, Community trade mark courts and morally offensive marks
How did you become involved in IP?
My first contact with IP was as a trainee in a Milanese law firm in 1982. I was working for a corporate lawyer but realised I would prefer to be doing IP. After that I went to the Max Planck Institute in Munich in 1983 where I worked in the Italian section reviewing case-law and so on. I wrote a thesis in German on Italian trade marks.
In 1987 I returned to Italy and worked for an IP firm before joining Professor Mario Franzosi's firm for five years. In 1993 Luca Trevisan and I left to create our own firm.
Why did you start a new firm?
We really wanted to focus on big international clients. We were very lucky when we started as we were successful in a trade mark case over Cottonelle. The client took a big risk as it had lost on appeal and been enjoined from using the trade mark, which was worth about $100 million. We won the case, in the process getting the first declaratory judgment of non-infringement of a trade mark in preliminary proceedings. The trade mark is now known as Scottonelle in Italy .
That was such a big case that it allowed us to build up the firm. We started with five people, but now we have 35 including trainees.
What kind of work do you do?
We do both litigation and prosecution. The prosecution of national and Community marks and designs is done through a company that is owned by the law firm. We also have an idea to expand prosecution to patents, perhaps through a joint venture with an existing agency. That is something we will be considering over the next few months.
Why did you decide to do both types of work?
It was a difficult decision to make. It means we lost referral work from agents but on the other hand we began to get instructions from clients directly. The prosecution firm operates really as a boutique giving opinions and consultancy as well as actually filing trade marks and designs.
Sometimes doing the filing is a big advantage when you come to litigate. For example, we had a case against Fendi where we acted for an Israeli clothing company involving the inverted double-F logo. In that case, we were able to find several double-F signs on the registry that Fendi had not opposed.
How do you think OHIM is doing?
Overall, OHIM deserves praise for the work it does: on an administrative level, the streamlined procedure and speed are excellent. On the decisional level, however, the service is less satisfactory as it does not fulfil expectations as much as before and coherence could be improved. Also, by increasing quality at examination/opposition level, the number of appeals (over 1,500 per year) could be reduced. Having said that, beyond all doubt the CTM system offers clear advantages.
What could be improved?
With regard to OHIM internal procedures, it can be asked why one can, or in some cases must, have recourse to four different degrees of examination (that is, the first and second on an administrative level, a third on a judicial level and a fourth on points of law of a decision) before a CTM is registered.
There are some other issues causing friction, such as the Pago decision of last October in which the ECJ ruled that a trade mark's reputation in Austria was a sufficient foundation for a trade mark dilution claim based on a corresponding CTM. The Court's opinion differed from that of its Advocate General, who had argued that, in general, a trade mark's reputation in just one EU country (however big) could not suffice. It follows from the ECJ decision that a CTM with a reputation in Malta and only in Malta should be considered well known. On the other hand, how is it possible that in the event one wants to invoke acquired distinctiveness through use pursuant to article 7 (3) evidence should be produced to show that it has acquired distinctiveness through the use which has been made of it for each member state separately, as required by the CFI ruling in Glaverbel with regard to a three-dimensional CTM?
What do you think about Community designs?
Many designs that are actually 3D trade marks are being accepted as Community designs. Taking into account the CTM courts' case law and practical experience at OHIM, some provisions such as article 51 CTMR laying down conditions for revocation or the notion of reputation as established by article 8 (5) could be modified to avoid confusion or uncertainty in interpretation.
What is the most unusual trade mark you have worked on?
One of our client's trade marks Leadershit was just accepted by OHIM for magazines in classes 16, 35 and 41 without any objection. We chose to file only with OHIM and not in Italy as we expected refusal on absolute (moral) grounds in Italy, while OHIM seems much more liberal (even if less so than the Benelux office). At OHIM, Screw You for sex shop goods was accepted on the grounds that the specific specialised public would be difficult to shock.
Have the courts in Italy improved since being reorganised?
There has been progress in trade mark litigation, and some cases can be completed in a year-and-a-half, particularly in the courts in Milan, Turin and Rome . You can get an injunction in a few weeks if you have a good case. There are 12 courts altogether for IP cases, and beyond those three cities cases are less predictable as it depends whether the judge has a background in IP.
All 12 of the courts are CTM courts, so there is the opportunity for forum shopping in Italy, but you have to be careful as some judges don't look favourably on this.
It might be interesting to do some research on whether the CTM courts system is functioning in a more satisfactory way in countries where there is only one central national court and tribunal designated as first and second instance as the CTM court, as in Spain and now also in France, compared to several as in Italy and the Benelux. With regard to the defence of CTMs against counterfeiting, there is still a certain distrust of companies to go to the CTM courts for infringement actions and actions in respect of threatened infringement relating to CTMs in any member state: there is a general fear that the judge might not know or might have difficulty knowing the national provisions of the other member states which should be applied to ensure compliance with a counterfeiting injunction, compensation for damages or other compensatory measures.
Better monitoring of the Community trade mark courts would be appropriate and more communication and effective cooperation between CTM courts and a better follow up of the CTM court judges' activity would be welcomed.
Has the growth of the CTM changed litigation?
There has certainly been a decrease in litigation over the top trade marks as you can file invalidity actions at OHIM. And if you do litigate, you can choose to go where the system is best.
How do you think trade mark work will change in the future?
New technologies mean filing work is more accessible to clients. So for IP firms the future will not be about providing standardised services. But where there are conflicts there will be cases and good lawyers will be needed. The work will have to become more sophisticated. Businesses are looking at new creative ways of using IP and we have seen big corporate deals that depend on the value and validity of trade marks. With all these changes, practitioners will have to adjust or die.