Advisory services provided to a client who received a cease-and-desist letter after self-filing a trade mark

Avv. Fulvia Sangiacomo describes a recent case of defending a start-up that self-filed a trade mark without conducting a preliminary search, registered a company under the same name, and initiated funding applications. The newly incorporated start-up subsequently received a cease-and-desist letter from the owner of a similar mark previously registered for the same class of goods and/or services.

Case summary

Scope of the advisory services:

BIESSE was approached by Mr Bianchi (fictitious name), owner of the newly incorporated start-up ALFABETA srl (fictitious name replacing the real name) and the website www.alcabeta.it (fictitious address), active in the sale and production of an innovative product called ALCABETA.

Mr Bianchi had incorporated the company, registered and set up the website, and begun promoting the product without having carried out any preliminary checks. Moreover, as a start-up, he had initiated several funding applications.

Unexpectedly, ALFABETA received a cease-and-desist letter from a company with a very similar name, ALTABETA (fictitious name), owner of a similar registered trade mark, ALKABETA (fictitious name), for similar goods in the same product class as ALCABETA. The sender demanded, in order of priority, the immediate change of the product mark ALCABETA, the change of the company name ALFABETA, and the change of the website www.alcabeta.it.

Mr Rossi then sought advice from BIESSE, pointing out that the product he was about to manufacture and sell, although similar in function to those produced by the sender, was intended for a different clientele (consumers rather than businesses) and that graphically the ALCABETA mark differed from ALKABETA. He also noted that changing the company name at this stage would be extremely costly and complicated, particularly in relation to the funding applications submitted.

Advisory services provided:

BIESSE's advisers verified and highlighted that:

  • the mark relied upon by the other party was validly registered in Italy and that, beyond the goods actually marketed by the sender, the mark also covered the goods that the recipient was about to manufacture;
  • Article 22 of the Italian Industrial Property Code (CPI) provides that signs identical or similar to a mark already registered in Italy or effective in Italy for identical or similar goods or services cannot be adopted as company names, registered or unregistered trade marks, or internet domain names, if, due to the identity or similarity of the signs and the identity or similarity of the goods or services, a likelihood of confusion on the part of the public may arise, which may also consist of a likelihood of association between the two signs;
  • the ALCABETA mark was phonetically identical to the ALKABETA mark, which was moreover registered as a word mark. This type of registration grants its owner an exclusive right over the sign as such, regardless of logos and typefaces;
  • given the situation, however complicated and costly, it was advisable to reach a settlement agreement. Since the product was not yet on the market, it was possible to propose to the other party to change the product mark and website as soon as possible and to negotiate a longer deadline for changing the company name as well.

Avv. Fulvia Sangiacomo

location_on
BIESSE Legal – industrial property law, trade marks and patents
phone_enabled
+39 030 41 586
mail
This email address is being protected from spambots. You need JavaScript enabled to view it.
captive_portal
www.biessebrevetti.com

Outcome:

Mr Bianchi was reluctant to accept BIESSE's advice and decided to propose a less restrictive settlement to the other party. An exchange of correspondence with the other party's lawyers ensued (which already generated legal costs for Mr Bianchi) in an attempt to resolve the dispute.

As a result, given Mr Bianchi's unwillingness to change the company name and his inaction in changing the product name and website, the sender initiated substantive proceedings before the Brescia Court, which are still pending. In those proceedings, the other party sought the immediate change of the product mark, the company name, and the website, as well as compensation for damages and reimbursement of all legal costs. ALCABETA will need to enter an appearance.

Had Mr Bianchi originally approached a consultancy firm before adopting the name ALCABETA as a company name, mark, and website, he would certainly have avoided all the problems related to the dispute and the associated costs.

Consultants at a firm such as BIESSE would have carried out a correct preliminary search at a cost of a few hundred euros, identified the existence of the ALKABETA mark, and advised the client not to proceed as he did. In this case, they helped him respond to the cease-and-desist letter and attempt to reach an amicable settlement.