Vincenzo Iaia
With judgement no. 155 of January 25th, 2022, the Court of Genoa rejected the claim filed by the Spanish fashion company Inditex S.A. (hereinafter “Inditex”) against the Italian pasta manufacturer Ffauf S.A. (hereinafter “Ffauf”) concerning the scope of protection of the trademark “Zara”. The litigation concerns the coexistence of the mark “Zara” and the mark “Pasta Zara” used by Ffauf to market various types of pasta.
In particular, Inditex filed a request of invalidity of the trademark “Pasta Zara” for lack of novelty based on its prior trademarks “Zara” registered in classes 25 and 35. According to the plaintiff, even if its trademark is not currently distinguishing food products, wide renown would have entitled the proprietor to a broader scope of protection than the one resulting from the goods actually covered, thus extending also to the food sector. Indeed, Art. 20, lett. c) of the Italian Industrial Property Code entitles the owner of a well-known trademark to prevent other undertakings from using a similar trademark even in dissimilar sectors.
From the defendant’s point of view, the great difference in the nature of both businesses would exclude any likelihood of confusion between them. Moreover, Ffauf submitted evidence of the prior use of its trademark, through its predecessor in title Pastificio Adriatico, which dates back before the World War II as the pasta factory was established in the eponymous town before it was annexed to the former Yugoslavia. Hence, Ffauf also counterclaimed the invalidity of the trademark ZARA filed by Inditex before the EUIPO and claiming food products. Such claim has then been renounced in the course of proceedings as the decision of the General Court on the matter was going to be issued .[1]
Even if the Italian Court acknowledged the renown of the brand “Zara”, it denied the risk of an unlawful interference between the trademarks as the conditions under which an extended protection is granted to well-known trademarks were not met and namely:
1. The owner of the subsequent trademark has obtained an undue advantage at the expense of the prior trademark’s owner .[2]
2. Such an undue advantage caused detriment to the prior trademark’s owner.[3]
3. There is no legitimate reason justifying the new exploitation of the earlier trademark.[4]
In other words, the broader protection granted to well-known trademarks does not automatically prevent other undertakings from using a similar trademark for operating in a different sector if the three conditions above are not met.
Moreover, the Court found that Inditex did not provide sufficient evidence that its business strategy encompassed the expansion in the food sector, as it merely submitted proof of just a few events in collaboration with restaurants and bars.
This judgement shows the Courts’ reluctancy to overexpand the market power arising from the attribution of intellectual property rights – even on well-known trademarks – over undertakings which use a mark in extremely distant market sectors and do respect the rules of fair competition.
In a nutshell, eating Pasta (Zara) is not a fashion, it’s a timeless classic!
[1]EU General Court, ch. II, decision of December 1st, 2021, e. The Court upheld the decision of EUIPO’s Board of Appeal concluding that there was a likelihood of confusion between the marks at issue as the goods covered by them either displayed a certain degree of similarity.
[2]EU Tribunal, sec. IV, decision of July 7th, 2010, no. 124.
[3]EU Tribunal, sec. V, decision of March 22nd, 2007, no. 215.
[4]ECJ, sec. X, decision of May 30th, no. 85.
