Community Trademark Courts in Italy: the Vuitton cases

Stefano Sandri

Court of Turin and Court of Rome lately decided on the protection of the Vuitton monogram in two counterfeiting cases. For the first time Italian Courts exercised their jurisdiction as Community Trademark Courts pursuant to article 93 of the CTMR. Vuitton company grounded its claim on the basis of the Community registration granted by OHIM for covering its well-known sign, as represented.

Both Courts settled the Vuitton action assessing the reputation of the LV mark and thus extended its protection in terms of distintiveness further the affinity between the relevant covered goods. As a matter of fact, the products were substantially identical but the decision made express reference to the “Davidoff” case. Dilution and prejudice for the distintive character and reputation of the CTM was therefore assessed in this respect. Therefore the infringer has been sentenced to pay relevant damages and to an injunction to refrain from further trading of the counterfeit products.

It is to be noted that Courts, deciding within the frame of Community Law, applied the material law thereof and made reference to the dominant jurisprudence of the European Court of Justice, as to the criteria governing the confusing similarity judgements between two conflicting trademarks.

In particular according to the decision of Court of Turin, making application of the unique character of the Community Trademark Law, granted the enforceability all over the territories of the European Union. Such decision would be available in due course under numbers 01/2008 and 02/2008 with full texts and further comments in IP-Italjuris.