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INTA Bulletin


September 1, 2015 Vol. 70 No. 15 Back to Bulletin Main Page

ITALY: Rome Court of Appeal Invalidates LACLINIQUE Based on Earlier CLINIQUE Trademark


Clinique Laboratoires asked the Court of First Instance of Rome to invalidate the Italian portion of the International Registration for LACLINIQUE, which was originally registered in the name of La Clinique s.c.p. and subsequently assigned to Providence Medcorp and licensed to Medinvest S.p.A. for all registered products and services.

LACLINIQUE was registered for:

  • Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; food for babies; plasters; materials for dressings; material for stopping teeth; disinfectants; preparations for destroying vermin; fungicides; herbicides;
       
  • Class 35: Advertisement; business management; business administration; office functions; and
       
  • Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Clinique Laboratoires requested that the Court declare the LACLINIQUE trademark to be infringing its trademarks CTM No. 54429 (CLINIQUE), granted on November 19, 1998, in Class 42; CTM No. 2294429 (CLINIQUE), granted on February 7, 2005, in Class 42; CTM No. 4544847 (CLINIQUE), granted on December 5, 2006, in Class 35; CLINIQUE ANTI-GRAVITY, CLINIQUE COLOUR COACHING and CLINIQUE EXCEPTIONALLY SOOTHING CREAM FOR UPSET SKIN.

In decision No. 9120/2011, the Court of First Instance of Rome invalidated the LACLINIQUE registration for lack of novelty in relation to “sanitary preparations for external use for medical purpose for the beauty care of human beings” in Class 5, “sanitary preparations for external use for medical purpose for the beauty care of human beings and related to the hygiene and beauty care of human beings” in Class 35 and “hygiene and beauty care for human beings” in Class 44.

Clinique Laboratoires appealed the decision and asked the Rome Court of Appeal to invalidate the Italian portion of the International Registration for the LACLINIQUE trademark for all registered products and services excluding “pharmaceutical products excluding the ones dedicated to skin care” and “medical services with the exception of services for aesthetic surgery” or, alternatively, for the category “medical services.”

Clinique also claimed infringement of its marks through the use of the LACLINIQUE mark by Providence Medicorp Limited and Medinvest S.p.A. and requested an injunction barring use of the mark.

Clinique Laboratoires alleged an error in the first instance decision. The company said that in nullifying the Italian portion of the International Registration, LACLINIQUE was held only to be invalid for goods in relation to “sanitary preparations for external use for the medical purpose of beauty care for human beings excluding other products” without including “pharmaceutical products not related to the care of serious pathologies but generically to skin care” and “dietetic substances for medical use.” Clinique also alleged that the decision erroneously nullified LACLINIQUE with respect to services in Class 44 such as “hygiene and beauty care for human beings” without extending the nullity to “aesthetic surgery services.”

On November 24, 2015, the Rome Court of Appeal ruled in favor of Clinique.

According to the Rome Court of Appeal, although the word “Clinique” has the same meaning as the Italian word “clinica” and indicates a nursing home or the branch of medical science which deals with the treatment of diseases, the French word was not in common use by the Italian public in that context. This fact was confirmed by an opinion poll according to which the majority of consumers linked the trademark LACLINIQUE to cosmetics more than to medical services.

The Court of Appeal therefore decided that the use of the LACLINIQUE trademark for pharmaceutical products dedicated to skin care and aesthetical surgery services would take unfair advantage of or be detrimental to the owner of the trademark LACLINIQUE, and would be detrimental also to the reputation of the Clinique trademarks.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association