Abstract
In the Vorwerk Folletto case, the Italian Court of Cassation delivered a judicial opinion on the interpretation of Art. 6(1)(c) of the Trade Mark Directive, which allows trade mark reproduction necessary in order to distinguish the intended purpose of a product or service, in particular as accessories and replacement parts. Departing from its previous case law, the Italian Court ruled that what is necessary in order to distinguish the destination is the use of the trade mark on packaging only, not also on products. This comment briefly illustrates the Court’s reasoning in one of its former decisions and relates it to the decision in Vorwerk Folletto, in order to shed some light on the rationale of this important revirement affecting competition on Italian aftermarkets.
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Notes
Articles 473 and 474 are counterfeit-related provisions of the Italian Criminal Code. The first provision prohibits counterfeiting, alteration or use of trade marks or other distinctive signs, as well as of creative works or industrial products. The second provision concerns “Introduction into the State and sale of products bearing counterfeit signs”.
Italian Court of Cassation, 18 November 2011, No. 47081, para. 28.
On this topic see Kur, “Trademarks Function, Don't They? CJEU Jurisprudence and Unfair Competition Principles”, in: 45(4) IIC 434–454 2014.
First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC), followed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (hereinafter the Trade Mark Directive or TMD).
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (hereinafter the Design Directive).
Such a wording derives from the wording of Art. 21 of the Italian Industrial Property Law (“necessary in order to indicate the destination of a product or service, in particular as accessories or replacement pieces”), which applies Art. 6 TMD (“necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts”).
See Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
See Case 500/14, Ford Motor Company, Referral from Tribunale di Torino (Italy) to the CJEU for a preliminary ruling, lodged on 23 January 2015.
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For a translation of this decision by Marco Bellia, see this issues of IIC at doi:10.1007/s40319-015-0357-5.
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Bellia, M. Comment on “Vorwerk Folletto”: An Important Decision Concerning Trade Mark Reproduction on Replacement Components. IIC 46, 620–623 (2015). https://doi.org/10.1007/s40319-015-0359-3
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DOI: https://doi.org/10.1007/s40319-015-0359-3