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The saga of cookie cushions continues: Barilla wins again
Tuesday, 24 April 2018 14:52

The saga of cookie cushions continues: Barilla wins again

Simona Franco

With a ruling, published on 25 January 2018, the Court of Milan again ruled on the trademarks andshapesof Barilla biscuits.  The issue had already been the subject of previous rulings by the Court, (before in preliminary injunction proceedings and then in the following appeal) all in favor of Barilla and covered in our IP Focus of 5 October 2015.

The Court granted that the production and distribution of cushions mimicking the shapes of Barilla biscuits, marketed with names that clearly recalled Barilla products (“Pandistelloso”, “Abbraccioso”, “Rigoloso”, “Goggiolosa”, “Ringoloso”), constituted the counterfeiting of Barilla's denominative and figurative trademarks, as well as an act of unfair competition pursuant to art. 2598 n. 2 and 3 Italian Civil Code.

On the basis of prerequisites established by the European Court of Justice (C-375/97, General Motors), the Court acknowledged that Barilla’s brands are renown.  Given the market share, strength, geographical coverage, and period of use of the brands, they could undeniably be consideredwell known to a substantial part of the relevant population.

Precisely due to the renowned of Barilla trademarks, the Court deemed irrelevant the argument that counterfeiting was precluded because the competitor's products belonged to a different product category.  Prominent brands such as Barilla enjoy a protection not solely confined to risk-of-confusion on the origin of the product, protection also operates in the absence of any affinity between product categories and because of the risk of the assumption of a connection that allows the competitor to take unfair advantage of the reputation of the brand.

The production and marketing of cookie cushions, which mimicked the features of the famous Mulino Bianco products, allowed the producer to link its products to Barilla’s brands - unduly benefiting from Barilla’s prominence and thus creating a risk of confusion on the origin of the cushions.

The Court also pointed out that the imitators did not just copy one single product of the Barilla line, but reproduced “the entire Mulino Bianco collection”, attributing the quality ofBarilla’sproducts to their own.  They had therefore been responsible for acts of parasitical and unfair competition, appropriation of value, and disparagement - ex 2598 n. 2 and 3 Civil Code.

The decision of the Intellectual property Divisionof the Court of Milan forbadethe production, marketing, and advertising of the cookie cushions mimicking the shapes of the Mulino Bianco biscuits and the Barilla brand.  The Court ruled the withdrawal of such cushions from the market.  In addition, the producer was ordered to pay Barilla compensation for damages amounting to € 150,000 as well as the entire legal costs both of the proceedings on the merits and of the preliminary injunction proceedings.

Pleasenote that the deadline for appeal has not yet expired and this judgment could be revised in during the appeal.