Following its organization of the exhibition “The Art of Banksy. A Visual Protest” 24 Ore Cultura was summonsed before the Court of First Instance of Milan by Pest Control Office. The latter – a UK company - is the owner of the name trademark “BANKSY” and the figurative trademarks depicting the famous “Girl with Red Balloon” and “Flower Thrower” – and handles the management and protection of the rights of the well-known British street artist.
Pest Control Office sought a ruling from the Court that 24 Ore Cultura, by using the registered name trademark “BANKSY” in the title of the exhibition and by reproducing the figurative trademarks in its commercial communication promoting the event, in the exhibition catalogue and on merchandise, was guilty of infringing the trademarks, of unfair competition by way of confusion and of unfair competition by way of conduct contrary to fair practice .
The Court of Milan ruled that use of the artist’s pseudonym in the exhibition title and the two figurative trademarks in promotion of the event did not constitute infringement, since the trademarks were used with a merely descriptive function. It stated that use of the name of the artist, to whom the exhibition was dedicated, and of the two figurative trademarks depicting his two most representative works was “standard practice in the sector and intendedto highlight the content of the exhibition and to orient the public with respect to the subject-matter thereof ”. As to the exhibition catalogue, the Court stated that unauthorized reproduction therein of the images of the “Girl with Red Balloon” and the “Flower Thrower” violated the exclusive right to reproduce the work, which as such pertains to the artist. However, this did not lead to a consequent finding of unfair competition pursunt to Article 2598 no. 3 since Pest Control Office had failed to demonstrate that it had acted in the capacity of owner of the rights of economic exploitation of the artist and could therefore not claim that it had suffered damage, even of a potential nature, as a result of the conduct of 24 Ore Cultura. The Court, however, correctly held that use of the BANKSY sign in relation to merchandise constituted unfair competition and issued the consequent injunction on sale, since “offer for sale of these products is aimed at promoting the sale of products other than those for which the trademark is well-known and primarily used”.