Protecting IP Rights.

Beware of potential ‘boomerang’ effects!

Protecting IP Rights.

Italian First Instance Court deals with an interesting case, disappointing the plaintiff.

The IP Section of the First Instance Court in Firenze (Italy) came to deal with some peculiar aspects of IP rights’ protection. The case originated from a complaint filed by a restaurant owner against a competitor (originally a potential business partner in a - not concluded - franchise deal), intending to protect its IP rights relating to registered trademarks (TMs) and to its “shop layout”, alleged to be covered by two registered community designs (RCDs).

The factual background of the dispute.

Arguing that he had registered both, a number of TMs – such as‘american graffiti’, ‘american graffiti country diner’,‘american graffiti on the road’ and others, similar ones - in class 43 (of the Nice Classification) as well as two RCDs in class 6 (of the Locarno Classification) for ‘composite furniture’, the plaintiff claimed that the defendant had infringed on his IP rights when choosing and adopting the furniture and the set-up of the competing diner and by making use of terms such as‘finger food’, ‘special Tex-Mex’,‘basket sandwiches’, ‘frenchontroni’, etc. for the dishes offered in the food menu.
The defendant reacted by filing a counter-claim, meant to obtain annulment both, of plaintiff’s registered trademarks, basically coinciding with the renown US movie “American Graffiti” (of 1973) as well as of the Registered Community Designs (for lack of novelty and of individual character).

The Court's view.

The Court in Firenze resolved the case by starting to examine the defendant’s counter-claims.
With respect to the requested annulment of the plaintiff’s registered TMs, the Court found that the defendant had no proper standing for such counter-claim as he had not been able to substantiate the existence of his ‘prior rights’. Therefore, the claim was dismissed.
Then the Court passed on to deal with the issue whether it was possible to seek – and obtain – protection of a ‘shop layout’ like the one alleged by the plaintiff in the specific case.
On this point the Court found that:
-    In general terms, the set of a shop or restaurant, consisting of its décor, of characteristic denominations used, of the menu and of other specialties offered to the clientele, may qualify for protection under the registered community design Regulation, being covered by the description contained in Class 6 (and its sub-classes) of the Locarno Classification.
-    More specifically, a particular ‘store layout’ can also result suitable – even by design alone - for IP protection, provided the presentation of an establishment includes a ‘sign’, capable of graphic representation and distinctive capacity with respect to the ‘goods’ or ‘services’ of an undertaking (the Court makes a clear reference to the judgment July 10, 2014 of the Court of Justice of the European Union in the Apple case, C-421/13).
-    On the contrary, elements simply evoking a certain historical period with characteristics typical for such period and as such fixed in our collective memory, lack both, of novelty as well as of distinctive character,
-    Therefore, any attempt, meant to claim exclusivity rights with respect to a ‘format’ or outlet’ actually originating from the reservoir of such collective memory, results in exploitation of ‘collective heritage’ and may therefore not lead to exclusivity rights in favor of a specific subject.
Hence, the Court held the defendant’s second counter-claim as grounded and annulled plaintiff’s RCDs.


Before starting an IP dispute in court, it is wise to perform an in-advance check on the strengths of your own position. Without a clear idea about your own standing, sometimes, such initiatives can result in a backlash in your face.