This ruling not only acknowledges the notoriety of the “Golfetta” trademark but also prohibits the use of a similar trademark concerning high-protein cured meats.
This significant decision underscores the legal valuation of three-dimensional trademarks, reinforcing entrepreneurial investment aimed at solidifying market positioning for these products.
Then, what was the pivotal element behind the success of the “Golfetta” in court?
Background of the proceedings
Golfera in Lavezzola S.p.A. (hereafter referred to as “Golfera” or “Applicant”), represented by the attorneys from Barzanò & Zanardo, initiated precautionary proceedings against a competitor (herein referred to as the “Respondent). The former sought relief due to the infringement of the shape trademark – both registered and de facto – pertaining to its product “Golfetta”, due to the fact that the latter had promoted a product that bore a confusingly similar shape, allegedly aimed at distinguishing their own identical high-protein cured meat.
In addition to the trademark infringement, Golfera accused the Respondent of unfair competition, pointing to their imitation of its product shape and the association with a trademark closely resembling “Golfetta.”
Conversely, the Respondent defended its actions by claiming that Golfera’s three-dimensional trademark lacked distinctiveness, asserting that the shape was common in the market and that the two cured meat products were sufficiently different, as were the respective trademarks.
Below are the trademarks and products at issue:
Decision
In its ruling (order no. 7294/2024, dated July 1st, 2024), the judge concluded that the de facto shape trademark of Golfetta had indeed been infringed, alongside affirming accusations of unfair competition due to the imitation of both the shape and name of the applicant’s product.
The decision was based on several key considerations:
- The distinctiveness and notoriety of the “Golfetta” shape;
- The substantial similarity of the two product forms;
- The potential for confusion between the well-known “Golfetta” brand and that of the Respondent;
- The direct competitive relationship between the two brands and the similarity of the product type (high-protein cured meats).
These factors collectively suggested a likelihood of confusion or association due to the coexistence of the products in the market, thereby validating the alleged infringements.
The decision specifically acknowledged that “Golfetta” cured meat, due to its distinctive shape and name, has progressively gained notoriety and market presence that “cannot tolerate servile imitations, appropriation, or violations of the de facto trademark, nor any conduct of unfair competition.”
The ruling mandated the removal of infringing content from social platforms and stipulated that the Respondent refrains from using the misleading trademark for all high-protein cured meats. It also imposed penalties for non-compliance, and for each day of delay in the execution of the order, and required reimbursement of legal costs.
Comments
This precautionary ruling, which has not been contested, is particularly noteworthy regarding the validity and protection of shape trademarks.
It recognizes the existence of the de facto three-dimensional trademark (the oldest right held by Golfera), especially in a crowded sector like food products.
In the food and beverage arena, product shape and packaging serve crucial roles in differentiation and appeal. However, the protection of shape trademarks faces specific limitations.
Case studies have repeatedly shown that demonstrating the distinctiveness of a shape trademark is often more challenging than that of word or figurative trademarks.
Case law suggests that average consumers are generally unlikely to identify a product’s origin solely based on its shape or packaging. Thus, only three-dimensional trademarks that significantly deviate from industry norms are deemed to possess distinctiveness.
In this instance, the key to success lay in effectively substantiating the validity of the de facto three-dimensional trademark, providing evidence that the Golfetta shape distinctly sets it apart from other cured meats available in the Italian market. This distinction, bolstered by comprehensive usage and substantial investments, serves as a clear and immediate indicator of origin for consumers.
In conclusion, this decision represents a strict application of three-dimensional trademark law principles while highlighting the importance of establishing “real” distinctiveness to secure effective protection.
This ruling is part of a broader trend toward the legal recognition of three-dimensional trademarks but also reflects the ongoing challenges faced by companies in safeguarding the external characteristics of common products – particularly in highly competitive markets like food, where shapes are often dictated by functionality and widely accepted aesthetic preferences.
The arguments presented in this ruling further emphasize the necessity for companies to adopt correct filing strategies and take prompt action against third-party interference.
Our consultants are available to assist in developing the optimal protection strategy.
