Italy
Italie
Italien
Report Q188
in the name of the Italian Group
by Cesare GALLI, Daniele DE ANGELIS, Alessia B. GELOSA, Niccolò GIORA
Conflicts between trademark protection and freedom of expression
Questions
1)
Analysis of current legislation and case law
1.1) a)
What instrument of your law (eg. Constitution) guarantees the right to freedom of speech?
In Italy, the right to free speech is protected primarily by art. 21 of the Constitution:
“Everyone is entitled to express their thoughts freely through words, in writing and by all
other means of diffusion ...”.
There is also another constitutional regulation which, in protecting freedom of enterprise,
indirectly protects freedom of speech of everyone in interacting with the recipients of their
economic activities (cf. point 1.4, ii): “Art. 41 – Private economic initiative is free ...”.
b)
What does the right to freedom of speech include? Is both artistic and commercial speech
protected? If so, does commercial speech have a different degree of protection?
The Constitutional Court, retracing the distinction between ”free speech ” and ”commercial speech ” contemplated by US law, has, on the one hand, excluded the possibility of
commercial advertising constituting free speech which may be protected pursuant to art.
21 of the Constitution, with the sole exception of ideological advertising (meaning advertising with a social and political message), while also granting protection to commercial advertising, intended as a business activity which is a ”source of financing of the
means of information “ pursuant to art. 41 of the Constitution (Constitutional Court sentence no. 131/73; Constitutional Court sentence no. 225/74 and Constitutional Court
sentence no. 148/81).
Italian regulations therefore make a distinction in protection of free speech depending on
whether said right is being exercised through expressions of thought which have an intrinsic and independent artistic value or not.
Take parody, for example. If parody is an expression of thought, but with an artistic
value, then it is protected by art. 21 of the Constitution; if not, when the parody has a primarily commercial value, this protection may not be invoked, although, the protection of
art. 41 of the Constitution effectively could be (cf. point 1.4, i).
c)
Are also corporations or only individuals entitled to invoke freedom–of–speech arguments?
In the Italian legal system, individuals and corporations are granted the same protection
in defence of the right to freedom of speech, although, for the reasons indicated in point
1.1.b above, the degree of protection is lower if the right to free speech is exercised for
commercial purposes.
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d)
Is free speech only protected from unwarranted governmental interference, or is it also implicated when a private party calls upon a court to enforce rules of law whose effect
would be to restrict or penalise expression?
Since it is a constitutional right, the right to freedom of speech, within the above limits, is
also protected against interference by private parties. This takes place both on the basis
of the general principle whereby non–constitutional regulations must nonetheless be interpreted in compliance with the Constitution and through the existence of specific requirements for different sectors. Several of the principal regulations protecting freedom of
speech are indicated below:
1.2) a)
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in law 633 of 22 April, 1941, and subsequent modifications thereto, known as the
Copyright Law, in part V, section I, the following free uses are governed: cases in
which original works may be freely used, without the author’s consent, for example
for purposes of public information, studying, free circulation and discussion of ideas;
–
the right to journalistic reporting is protected in art. 51 of the Criminal Code, which
also contemplates this right being exercised when it causes damage to another’s
reputation, provided the information is true or has been seriously verified and there
is public interest in knowing it;
–
in art. 3 bis of legislative decree 74 of 1992, in implementation of EC directive
84/450/EEC, as modified by directive 97/55/EC, on misleading and comparative
advertising, the conditions of lawfulness of comparative advertising are identified
and it may therefore once again be concluded that full freedom of speech is permitted and only limited in specific cases.
How are free speech interests invoked in trademark litigation?
In Italian legal experience, disputes have arisen on various occasions which could have
related to the potential conflict between the right to freedom of speech and the exclusive
rights deriving from ownership of a trademark. These cases will be examined in detail in
point 1.4 below.
It should also be emphasised that the courts have rarely based their assessment of lawfulness of use of another’s trademark on art. 21 of the Constitution and have more frequently referred to considerations based directly on application of trademark law.
b)
Is there a provision in your trademark law which specifically concerns the admissibility of
e.g.:
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–
–
–
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criticism of another’s mark or derogatory reference to another’s mark;
parody, satire or irony;
artist’s use of another’s mark;
using another’s mark as a badge of loyalty or allegiance;
using another’s mark for the purposes of comparison, point of reference, description,
identification, or to convey information about the characteristics of defendant’s own
product
to the extent that such use may be considered as an exercise of the constitutional right of
freedom of speech? (Please specify in case use is understood as involving a non–trademark use in which case the question of freedom of speech does not arise).
To start with, it must be said that Italian regulations on protection of industrial property
rights were recently collected together (23 December, 2004) into an Industrial Property
Code (hereinafter: CPI), which also collected together and revised regulations on trademarks already contained in the Trademark Law (Royal Decree 929 of 21 June, 1942 and
subsequent modifications thereto).
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However, the CPI, like the Trademark Law, does not contain specific regulations governing potential conflicts between the right to freedom of speech guaranteed by the Constitution and the exclusive rights held by the owner of a trademark.
c)
If no such provisions exist, how are free speech interests invoked in trademark litigation?
Is there an “open end clause “ or “fair use clause “ in your trademark law which permits
taking into account freedom–of–speech–arguments? If not, are there any other gateways
in your trademark law to permeate free speech concerns? Or do courts apply freedom–of–speech arguments directly with reference to the constitution?
The new formulation of the regulations governing the area of protection of a trademark
(arts. 20 and 21 CPI) specifies, first of all, that the holder is entitled to prohibit all uses
made “in economic activity “ of identical or similar marks to its own trademark which
lead to confusion or a parasitic link. The expression used by the new regulation, although
it is broader than the one used in Directive 89/104/EEC (“in commerce “), would seem
to make it clear that the trademark right does not allow its holder to prohibit uses of its
trademark which do not take place for financial purposes.
Art. 20, 1st paragraph, letter c of the CPI, in compliance with art. 5.2 of Directive
89/104/EEC, also contains a general clause which excludes unlawfulness of non–confusing uses of another’s trademark which lead to exploitation of or prejudice to the distinctive nature or reputation of the trademark, when these uses are supported by a “just
motive “. Italian doctrine considers the notion of “just motive “ typically to include the
cases indicated in the subsequent art. 21 of the CPI, which basically correspond with
those referred to in art. 6.1 of Directive 89/104/EEC.
In particular, art. 21 of the CPI considers use of another’s trademark lawful when this is
necessary to indicate the destination of a product or service. In particular, the regulations
mention use of another’s trademark to indicate that one’s own product is an accessory or
spare part for the product of the holder of the trademark. The law has clarified that, in
any case, the other’s mark must be used in compliance with the principles of professional propriety and considers use of another’s mark as unlawful when it could lead to misunderstandings over the commercial origin of the product (for all, Court of Cassation sentence no. 10739 in Giur. Ann. Dir. Ind., 1998, 164 and following).
d)
How much discretion do the courts have in applying free speech concerns?
The absence of a specific regulatory requirement on the justification of freedom of speech
leaves application of said justification to the very broad discretion of the court.
1.3) If there are trademark infringement cases in your country where defendant primarily sought to
attack a company’s ecological or employment policy, commercial practices and the like, do
these cases also address the application of rules prohibiting defamation such as libel and
slander or do they focus on the tarnishment of plaintiff’s trademarks only? (The National
Groups are not expected to elaborate on their country’s laws prohibiting defamation.)
In published Italian law, the only case where this type of problem could have come directly
into consideration is represented by a dispute between a bank and a savers’ association,
whose website was identified by a domain name incorporating an abbreviation (MPS) which
formed the acronym of the name of the bank and one of its trademarks.
In this case, the Court of Siena, on petition of the Monte dei Paschi di Siena bank, prohibited
use of the domain name “mpsclientidelusi.it“, since it decided that its formulation incorporated a margin of ambiguity, which could have led those using the Internet to link the website
with the bank in question. However, the same sentence recognised as legitimate the domain
name “clientidelusidimps.it“, considering that, in this case, use of the abbreviation corre–
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sponded with a justified and lawful descriptive requirement of the activities of the Association
(Court of Siena order of 11 August, 2003, unpublished but due for publication in Giur. Ann.
Dir. Ind. 2003).
1.4) a)
If you consider the trademark infringement cases in your country in which freedom of
speech–arguments were invoked what are the criteria applied by courts for determining
whether a freedom–of–speech argument is justified? How important is the reputation of
the trademark in question? Does it matter whether the use of the trademark in question is
non–commercial or may free speech–arguments also be invoked if the trademark use is
mainly commercial in nature? Does it matter whether the use of the trademark involves an
expression or social discourse of objective/considerable value or a contribution to the
public debate? Is the defendant allowed to express his views in a trenchant way? Or is
the defendant required to report in a balanced way or even sparingly?
If necessary, please differentiate between:
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criticism of another’s mark or derogatory reference to another’s mark;
parody, satire or irony;
artist’s use of another’s mark;
using another’s mark as a badge of loyalty or allegiance;
using another’s mark for the purposes of comparison, point of reference, description,
identification, or to convey information about the characteristics of defendant’s own
product
to the extent that such use may be considered as an exercise of the constitutional right of
freedom of speech (please specify in case use is understood as involving a non–trademark use in which case the question of freedom of speech does not arise).
In Italy, the cases which consider commercial and non–commercial use of another’s
trademark specifically in terms of infringement, unfair competition and civil protection of
honour and reputation are numerous. In this case, it would seem appropriate to distinguish between:
i)
use of another’s trademark for reasons of criticism
ii)
use of another’s trademark in a parodic or ironic manner;
iii) use of another’s trademark in original works;
iv) use of another’s trademark as an expression of allegiance or loyalty;
v)
use of another’s trademark in comparison between different company trademarks.
Criticism
See what has been said in point 1.3 above.
Parody and irony
The law has considered as infringement pursuant to art. 1, 1st paragraph, letter c) of the
Trademark Law (now art. 21, 1st paragraph, letter c) of the CPI, corresponding with art.
5.2 of Directive 89/104/EEC) the reproduction of the well–known trademark of “Agip“
oil products (depicting a six–legged dog with a flame coming from its mouth on a yellow
background, outlined with a dark line) on t–shirts placed on sale with the word “Acid“ in
place of the word “Agip“, because the use constituted unauthorised parody, liable to procure undue advantage in terms of commercial utility and to cause prejudice to the reputation of the “Agip“ trademark. In particular, the sentence stated that affixing of the words
“Acid” and “Self Area” respectively led to an ambiguous linking of the “Agip” trademark
with both a musical trend and hallucinogenic substances notoriously used in discotheques
(cf. Court of Milan sentence of 4 March, 1999, Agip Petroli s.p.a. vs. Dig. It. International s.r.l. and Ambrosiana Serigrafia s.r.l., in Giur. Ann. Dir. Ind. 1999, 3987).
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On another occasion, however, the law rejected the claim that the depiction of a humanised crocodile, in cartoon form, incorporated reference to the well–known Lacoste
trademark and could, in any case, be confused with it (Court of Milan sentence of 12
July, 1999, La Chemise Lacoste S.A. vs. Crocodile Garments Ltd, in Giur. Ann. Dir. Ind.
1999, 4017). In this case, existence of parody was also not considered as relevant for
purposes of application of art. 1, 1st paragraph, letter c) of the Trademark Law, on the
basis of the all–encompassing consideration that use of the parodic trademark was made
on products of the same genre as those for which the original trademark was registered
(the sentence was passed before the EC Court of Justice specified that use of a trademark
the same as or similar to another’s well–known trademark on identical or similar products
to those for which the trademark was registered may also be important for application of
art. 5.2 of Directive 89/104/EEC).
Use of another’s trademark in original works
As already said (paragraph 1.2 above), Italian law considers use of another’s trademark
in commercial activities (including advertising) as infringement, deeming said use as not
justified by the right to freedom of speech guaranteed by art. 21 of the Constitution
Emblematic of this position is the treatment received in law by use of another’s trademark
in the titles of publications. The Court of Bologna, starting from the assumption that the
trademark of Bologna Calcio “is well–known, at least at regional level”, considers use of
the word “Bologna” in the title of a magazine dedicated to the football club of the same
name as infringement, on the basis of the extended protection referred to in art. 1, 1st
paragraph, letter c of the Trademark Law (Court of Bologna sentence of 1 February,
2001, in Repertorio di AIDA, 2002, item IV.3.3).
However, the Court of Milan decreed (Court of Milan sentence of 30 March, 1998,
Swatch SA vs. Antiquorum Italia s.r.l. and Grimoldi s.r.l., in GADI 1998, 620) that “The
use of another’s trademark as the title of a monographic original work, chosen for purposes of description of the contents of said work, does not constitute infringement of the
trademark “.
The different handling of the two cases would seem to be explained by the fact that periodic publication was considered on a par with a commercial product, whereas a monographic volume primarily constituted an original work.
Also in relation to the use of a football team’s marks, in this case on a calendar, the court
decreed that “trademark rights do not allow prohibiting of use of the coat of arms and
name of a football team in order to write about that team, but do allow objection to use
of said trademark in order to advertise a product (a calendar in the case in question),
which has its own, independent function entirely different to that of providing information
on the team or its players, i.e. when said use is made to induce consumers, attracted by
the evocative power of the trademark, to purchase the product “ (Court of Turin sentence
of 5 November, 1999, Juventus F.C. s.p.a. et al vs. Forservice s.r.l., in Repertorio di AIDA
2000, IV 3.3., 1079; also, in this sense, the order of the relative precautionary phase,
Court of Turin order of 13 April, 1996, Forservice s.r.l. vs. Juventus F.C. s.p.a. et al, in
IDI 1996, 1007).
It should also be noted that, in a similar case (in which only the rights to the name and
image would appear to be taken into consideration, and not trademark rights), another
judge did not deem to be unlawful a calendar containing news on footballers and their
teams, recognising its informational nature (Court of Milan order of 1 March, 1996,
Alessandro Bianchi and Roberto Carlos vs. Forservice s.r.l., in IDI 1996, 1005).
See also point iii) below on use of football teams’ marks.
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Use of another’s trademark as an expression of allegiance or
loyalty
The importance of use of the marks of football teams (Italy’s national sport) in merchandising has given rise to an extensive disputes.
Too many decisions have been published to refer to them all: a large number of cases are
cited and discussed in GALLI, Estensione e limiti dell’esclusiva sui nomi e sui segni distintivi dello sport tra merchandising e free–riders, in AIDA 2003, to which reference should
be made.
By way of very brief summary, it may be said that Italian courts seem to swing between
the position of those who consider as lawful the use of football teams’ marks on gadgets
relating to them, when the function of the marks reproduced is solely that of evoking the
team in its sporting dimension, i.e. limited to the non–commercial meanings of the marks
being imitated, and the position (which could be said to be the prevailing one) of those
who consider this also to constitute infringement, since the altered function of the trademark – no longer just a mark, but a global means of communication – justifies the holder’s right to prevent unauthorised uses of its trademark in economic activity which lead to
a reference to any one of the components of the “message” linked by the general public
to its trademark.
Use of another’s trademark in comparison between company
trademarks
In two cases, the Italian courts did not consider inclusion of another’s trademark in a table
of concordances between perfumes to be infringement, because it served a descriptive,
rather than a distinguishing, function (pursuant to art. 1 bis of the Trademark Law). However, this conduct was considered unlawful from a viewpoint of competition, pursuant to
art. 2598, no. 2, of the Italian Civil Code, since its author gained an advantage from the
reputation of the manufactures of the perfumes imitated and the relative trademarks, with
consequent damage to the reputation of said manufacturers (Court of Milan sentence of
1 February, 1999, Kenzo S.A. et al vs. Sabrina Zappa, in Giur. Ann. Dir. Ind. 2000,
4078; Court of Milan sentence of 2 December, 1993, Chanel S.A. vs. Axel Leonard Cosmetics, in RDI 1994, II, 286).
In the doctrine, various authors (SENA, Il nuovo diritto dei marchi³, Milan, 2001, pages
145–146; RICOLFI, I segni distintivi. Diritto interno e diritto comunitario, Turin, 1999,
page 148; and GALLI, Segni distintivi e industria culturale, in AIDA, 200, 395–396)
have nonetheless claimed that descriptive uses of another’s trademark made in economic activity which do not comply with the principles of professional propriety constitute infringement of a trademark, because they involve prohibited forms of a parasitic link.
However, the doctrine also considers as lawful the use of comparative tables (the
so–called Warentest) in comparative advertising (MAYR S., Pubblicità ingannevole. Warentest e pubblicità, in IDI 1996, 1054; BONASI BENUCCI, Liceità del Warentest, in Riv.
dir. comm. 1963, I, 473). With the introduction of Directive 97/55/EC on comparative
advertising (implemented in Italy through legislative decree 67 of 25 February, 2000),
this lawfulness is also considered as conditional upon the existence of the presuppositions
indicated in the Directive itself, particularly the one which requires that the advertising
“does not cause discredit to or denigration of the trademarks, commercial names, other marks”.
2)
Proposals for adoption of uniform rules
2.1) a)
Should free speech interests be invoked in trademark litigation?
The Italian group believes that, under specific conditions, it would be correct to invoke the
justification of freedom of speech interests in trademark litigation.
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b)
If so, should there be provisions in trademark law which specifically concern the admissibility of e.g.:
– criticism of another’s mark or derogatory reference to another’s mark;
– parody, satire or irony;
– artist’s use of another’s mark;
– using another’s mark as a badge of loyalty or allegiance;
– using another’s mark for the purposes of comparison, point of reference, description,
identification, or to convey information about the characteristics of defendant’s own
product
to the extent that such use should be considered as an exercise of the constitutional right
of freedom of speech? (Please specify in case use should be understood as involving a
non–trademark use in which case the question of freedom of speech does not arise).
The Italian group does not consider it necessary to introduce specific requirements on the
cases considered here into trademark legislation. In the opinion of the Italian group, the
solution lies in a general clause, which extends the area of trademark protection only to
all uses in economic activity of marks which are the same as or similar to the trademark
itself which lead to confusion or a parasitic link.
2.2) In cases where defendant primarily seeks to attack a company’s ecological or employment
policy, commercial practices and the like, should these cases be addressed in the context of
a potential tarnishment of the plaintiff’s trademarks or should rules prohibiting defamation
such as libel and slander be applied?
For the reasons indicated in paragraph 2.1.b above, the Italian group believes that these
uses, since they do not occur within economic activity, must be excluded from the area of protection of the trademark, with the result that their lawfulness must be judged on a par with all
other expressions of thought.
A problematic case would seem to be the one in which those making use of another’s trademark for purposes of criticism or to attack the holder’s policies place on the market goods carrying the trademark (naturally used in contexts of criticism or attack). In this case, it would
seem reasonable to distinguish between the case in which the commercial purpose prevails in
this activity (with the result that this falls within use in economic activity and therefore potential infringement) from the one in which the manufacturing and sale of these products is of
marginal commercial importance, with the result that it may still be considered as justified.
This distinction would, in any case, seem to be implicit in the general criteria referred to in the
paragraph above.
2.3) a)
b)
Should there be limits to free speech in a trademark infringement context?
If so, what should be the criteria be for determining whether a freedom–of–speech argument is justified? How important should the reputation of the trademark in question be?
Should it matter whether the use of the trademark in question is non–commercial or should
defendant also be entitled to invoke free speech–arguments if the trademark use is mainly commercial in nature? Should it matter whether the use of the trademark involves an expression or social discourse of objective/considerable value or a contribution to the public debate? Should the defendant be allowed to express his views in a trenchant way? Or
should the defendant be required to report in a balanced way or even sparingly?
If necessary, please differentiate between:
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–
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criticism of another’s mark or derogatory reference to another’s mark;
parody, satire or irony;
artist’s use of another’s mark;
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–
–
using another’s mark as a badge of loyalty or allegiance;
using another’s mark for the purposes of comparison, point of reference, description,
identification, or to convey information about the characteristics of defendant’s own
product
to the extent that such use should be considered as an exercise of the constitutional right
of freedom of speech? (Please specify in case use should be understood as involving a
non–trademark use in which case the question of freedom of speech does not arise).
The Italian Group believes that the general criteria it proposed should be adopted in
point 2.1.b above would allow the right weight to be given to each of the cases discussed.
The Italian Group believes that, in principle, use of a sign as a trademark exists whenever the mark itself, due to the context and the ways in which it is used, is perceived as the
general public as the carrier of one or more of the components of the message linked with
the trademark. The lawfulness of use of this kind should essentially depend upon: i) the
fact that this use is made in economic activity and ii) whether or not it is liable to cause
damage to the trademark and, in particular, to its distinguishing capacity and reputation,
or to cause a parasitic link in favour of the user.
According to these criteria, it may be concluded that, on the basis of the trademark law:
i)
use of another’s trademark for reasons of criticism should normally be considered as
lawful;
ii)
parodic or ironic use of another’s trademark should normally be considered as unlawful, if it occurs on commercial products or in advertising;
iii) use of another’s trademark in original works should normally be considered as
lawful;
iv) use of another’s trademark as an expression of allegiance or loyalty should
normally be considered as unlawful, if it occurs on commercial products or in advertising;
v)
c)
use of another’s trademark in comparison between company trademarks should normally be considered as lawful, provided it is not liable to cause damage to the trademark and, in particular, to its distinguishing capacity and reputation, or to cause a
parasitic link in favour of the user.
How should joke articles be assessed?
N/A
d)
Should using another’s mark as a badge of loyalty or allegiance be considered as an exercise of the constitutional right of freedom of speech? Should it matter whether the
scarves and other goods are sold to consumers? Should it matter whether the manufacturer indicates that the goods are not original?
See the reply provided in paragraph 2.3. a)–b) above.
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