By an order dated January 16, 2015, the Court of Turin has granted an injunction against the defendants’ use of the well-known Chanel trademarks in the course of trade in Italy. The contested use was made by two Italian companies and an individual who inserted Chanel’s most popular perfumes’ trademarks (CHANEL, N° 5, 5, COCO, COCO MADEMOISELLE, ALLURE SENSUELLE, ALLURE SPORT CHANELLE and EGOISTE) into comparison tables with the intended purpose of informing consumers about the similarity of their fragrances with the corresponding perfumes/scents sold by the well-known Parisian company.
As every consumer should be made aware, the comparison tables are used by producers of lesser-known perfumes in order to create a link between their perfumes and other, well-known perfumes created and sold by leading fashion companies.
According to the Court, the use of another’s trademarks in one’s own commercial advertisements constitutes trademark infringement. In particular, the Court maintained that the jus prohibendi of the trademark owner concerns all possible uses in the course of trade, and Article 20 para. 2 of the Italian Industrial Property Code allows the trademark owner to prevent third parties from affixing a sign on their products or packages; offering the goods, putting them on the market or stocking them for those purposes, or offering and supplying services under that sign; importing or exporting the goods thereunder; and using the sign on business letterhead and in advertisements.
In the present case, according to the judge, the comparison tables involve the use of another’s trademark in advertising and does not fall within any exception provided by the law. Indeed, such use could not be considered as either merely descriptive or necessary to indicate the intended use of the goods or services, in particular as accessories or replacement parts in accordance with Article 21, para 1, of the Italian Industrial Property Code. In the present case, the prerequisite of “necessity” is lacking because it is possible to provide the consumers with the desired information without making any reference to another’s trademark. The information can be provided by describing only the fragrance and the elements used to make the perfume.
Finally, according to the judge, no legitimate comparative advertisement can be claimed in the present case. The advertising technique of the comparison tables is an indirect, surreptitious and allusive method to propose a defendant’s own product as an imitation of the famous one identified by the trademark.
This decision is in line with the previous judgment by the Court of Justice of the European Union (CJEU) No. 487/2009 L’Oréal v. Bellure NV.
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