Vincenzo Iaia
With the decision no. 15903 of June 6, 2023, the Italian Supreme Court provided some guidance on what constitutes effective use of a trademark to prevent its abandonment with specific regards to the entertainment market. The sign at issue was the word mark “Passaparola”, registered by Reti Televisive Italiane Ltd. (hereinafter “RTI”) after clearing a license from the British company ITV Studios Global Distribution Ltd. (hereinafter “ITV”) to realize a TV show inspired to “Alphabet Game”.
RTI broadcasted “Passaparola” on an Italian TV channel until 2005. After that, the entertainment company produced a special edition of the show between December 2007 and January 2008. The last traces of the TV program date back to 2013 when RTI aired a few reruns on the TV Channel “Mediaset Extra”. ITV registered the European trademark “Passapalabra” for services related to the television and entertainment sectors. It also filed before the Turin Court of First Instance a trademark revocation action for non-use of “Passaparola”. The Court partially granted ITV’s request to certain classes.
ITV appealed the decision to extend the revocation to the other classes. However, the Turin Court of Second Instance considered the reruns of the program, even if broadcasted on another TV channel, as a use of the trademark sufficiently effective to prevent abandonment. According to the Court of Appeal, it was not necessary to examine the success of the reruns as long as the show was broadcasted on national TV channels.
ITV lodged an appeal in cassation arguing that the reruns on Mediaset Extra constituted only a minimal, sporadic, and symbolic use of the disputed trademark. The Supreme Court upheld the claim, recalling the European case law that requires a careful examination of the facts proving the commercial exploitation of the mark to maintain or gain market share (ECJ, 11 March 2003, C-40/01; ECJ, 13 September 2007, C-234/06; ECJ, 19 December 2012, C-149-11). It implies that symbolic uses of the trademark do not prevent the risk of abandonment. In the past, this was the case of the inclusion of the trademark in catalogs related to spare parts of passenger cars to indicate that they are also suitable for products identified by that trademark. According to the Turin Court of First Instance, this use has a purely descriptive nature, although it could prove the persistence of the sign in the memory of consumers, which may constitute an impediment of registration by third parties (decision of 14 June 2000, Volkswagen AG vs. Fiat-Iveco Ltd.).
The Supreme Court affirmed that in the entertainment market, the mere rebroadcasting of a TV show does not equate to effective use of all the trademarks reproduced therein. It is also not decisive whether the show is aired on national channels. Conversely, it is necessary to assess whether the broadcast of the program that carries the trademark has a real impact on the respective market. How this “actual impact” should be measured in practice remains an open question that becomes the heaven for lawyers called upon to support or contradict the effective use of the mark.
With specific regard to the entertainment sector, the relevance of the frequency and duration of the broadcasting has been highlighted. Based on this reasoning, the Supreme Court annulled the decision of the Turin Court of Appeal. Hence, the Court of merit will be required to ascertain again – and in a more rigorous way – the effective use of the mark “Passaparola”. The rerun of a TV show seems enough to pass the “effective use test” set by the ECJ if we consider that it allows the rightsholder to maintain the market share.
We look forward the decision of the Turin Court of Appeal to know whether the TV show “Passaparola” will be broadcasted again on the Italian TV channels!
