Defence Following a Cease-and-Desist Letter After Self-Filing a Trade Mark
Avv. Fulvia Sangiacomo describes a recent case of defending a Biesse client who self-filed a trade mark and subsequently received a cease-and-desist letter from the advisers of a well-known fashion brand. For reasons of sensitivity, the client's true name has been omitted.
Case summary
Scope of the advisory services:
BIESSE was approached by Mr Rossi (fictitious name), owner of the newly incorporated company MARGHERITA srl (fictitious name replacing a well-known Italian fashion brand) and the website www.margheritacalze.it (fictitious address), active in the sale and production of intimate apparel.
Mr Rossi had independently filed the mark MARGHERITA for apparel items at the Brescia Chamber of Commerce and had received a cease-and-desist letter from the advisers of the well-known brand LA MARGHERITA, demanding that he immediately cease all use of the term MARGHERITA, withdraw the mark, and cancel the website, on pain of opposition proceedings and an infringement action for the registered marks LA MARGHERITA.
Mr Rossi then sought advice from BIESSE, pointing out that the products he was about to sell would not be branded MARGHERITA CALZE, which he believed allowed him to retain the company name and website for sales purposes. He also noted that at the time of filing the Chamber of Commerce had verified that no MARGHERITA CALZE marks were already registered.
Advisory services provided:
BIESSE's advisers highlighted that:
- searches conducted by Chambers of Commerce are always partial and incomplete, as they do not verify all available databases (in this specific case they had not checked the EU trade mark database, valid in Italy) and often do not correctly determine the search criteria for a mark, which consists of distinctive and non-distinctive elements;
- Article 12 of the CPI provides that signs which at the filing date are identical or similar to a mark already registered in Italy or effective in Italy for identical or similar goods or services cannot be registered as trade marks, 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, including a likelihood of association between the two signs;
- Article 22 of the CPI provides that it is prohibited to adopt as a trading name, company or firm name, business sign, or internet domain name used in economic activity a sign identical or similar to another's registered mark if, due to the identity or similarity between the business activities of the owners of those signs and the goods or services for which the mark is adopted, 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 mark LA MARGHERITA, in particular, besides being registered as an EU trade mark, is a well-known mark enjoying special protection;
- if the owner's intention was not to produce and sell apparel under the MARGHERITA CALZE brand but to launch an e-commerce website, the class identified at the time of filing was incorrect.
Results achieved:
On the basis of the above, Mr Rossi, in order to avoid the costs of opposition proceedings and a potential infringement action, proceeded to:
- withdraw the mark,
- change the website,
- change the company name,
- respond to the cease-and-desist letter by signing a settlement agreement.
Consultants at a firm such as BIESSE would have conducted a correct search, identified the existence of all LA MARGHERITA marks, and advised the client not to proceed as he did. In this case, they assisted him in responding to the cease-and-desist letter, reviewing the settlement agreement, withdrawing the mark, and advising on the new mark that Mr Rossi decided to use.
