Case Study: Protection Of Famous Trademark

On November 23 2007 the IP chamber of the Court of Naples issued a decision in proceedings brought by the Moulin Rouge, the famous Parisian cabaret, against an Italian production company which was counterfeiting the Moulin Rouge's trademark in Italy.

The latest decision is an example of the efficiency of the Italian IP chambers: an interim measure in favour of the Moulin Rouge was secured less than 24 hours after filing. It also confirms certain principles already stated by commentators and established by case law.

Dedicated Courts

Decree-Law 168/2003 created specialized IP chambers in 12 district courts and courts of appeal in Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice. The IP chambers have exclusive competence over all proceedings involving industrial and intellectual property, including:

national, international and Community trademarks;

utility patents;

industrial designs;

copyright; and

unfair competition issues arising from IP infringements.

Specialist judges sit in each chamber; cases are decided by a panel of three judges in ordinary proceedings and by one judge in urgent proceedings. The aim of the specialized IP chambers is to improve the quality and efficiency of decisions in this complex area of law - the rapidity of the Court of Naples decision is a measure of their success.

Interim Remedies

The new IP Code makes certain interim remedies available to protect trademark holders' rights. In urgent cases, rights holders may obtain:

an injunction ordering the infringer to cease the infringement, which may carry a fine for further infringement;

the interim seizure of the infringing goods - this, like the order above, may be used as a means of proving infringement;

description orders;

access to the infringer's accounts and databases to discover information about its suppliers and clients; and

publication of the decision in national newspapers.

Interim measures require the rights holder to show that there is a well-founded prima facie case and a risk that the infringement may cause irreparable damage. Interim measures can be issued either inaudita altera parte (ie, on the basis of the writ of summons alone and without the other party being heard) or following a hearing at which both parties are present. In addition, seizure or description orders may be enforced, under certain conditions, in relation to products owned by third parties.

In the Moulin Rouge Case the judge first issued...