Recently, the British luxury brand Burberry won a trademark infringement lawsuit in the Italian Supreme Court.
In this case, Burberry sued certain Chinese companies (hereinafter referred to as “defendants”). These The company sells clothing with Burberry’s signature plaid pattern. The Criminal Chamber of Italy’s highest court, in its decision, firmly sided with Burberry, overturning several unfavorable rulings by lower courts.
Review of the case:
It is reported that the Italian District Court of first instance held that because the Burberry brand name did not appear in the patterns of the goods sold by the defendant, Consumers are unlikely to associate it with the Burberry brand. Therefore, the defendant is exempted from liability for infringement.
In its appeal, Burberry argued that the brand’s iconic plaid pattern itself could serve as a hint of the brand’s origins. The plaintiff’s lawyer stated that the defendant’s unauthorized reproduction of the plaid pattern is likely to mislead consumers into believing that these products are related to Burberry, so this behavior is infringing.
In this regard, the second-instance appeals court partially agreed with Burberry’s point of view and ruled that the defendant’s unauthorized use of the Burberry plaid pattern (without using the Burberry brand name) may constitute infringement, but it did not Burberry won the lawsuit on the basis that the plaid pattern belonged to the “famous Scottish plaid pattern” in a broader scope. The court held that Burberry’s plaid pattern of tan, black, white and red did not function as a trademark.
In October 2020, the Italian Supreme Court’s ruling expressed support for Burberry, that is, “In this case, the plaintiff does not need to reproduce the plaid pattern at the same time. and brand name have constituted infringement.”
The Italian Supreme Court held that in this case, the disputed trademark has widely established reputation, has been recognized by most of the public, and can be immediately associated with associated with the goods or services using the trademark.
After the reform of European trademark law at the end of 2015, a higher level of protection was given to trademarks with “reputation” within the EU, and its scope of protection exceeded traditional trademark management principles.
Cristiana Andreotta, a lawyer at Bird & Bird LLP, an international law firm, commented: “This case involves a violation of criminal laws that protect public beliefs and is intended to eliminate any actual confusion among the public. This verdict is a great one for Burberry.” An important precedent. Not only because this judgment recognizes the widespread reputation and uniqueness of the Burberry check pattern, but above all because it overturns the dangerous precedents set out in the first and second instances that were completely inconsistent with Italian case law.” </p
