7 September 2017Jurisdiction reportsAndrea Cappai

Fame is no protection for ‘Lambretta’

Lambretta was the name of a mythical water sprite associated with the river. Europe had been shattered by World War II and this new, cheap yet stylish means of private transport met with immediate success in a market that was looking for a boost after the long years of war.

Twenty or so years later, the biggest economic boom of the 20th century allowed European consumers to move from two wheels to four-wheeled vehicles and the commercial success of the Lambretta started slowly to fade away. However, 6,000 km away from Milan there was another gigantic market with poor infrastructure and a great need for a means of private transport: India.

Lambretta scooters had been sold in India since the early 1950s. They enjoyed extensive success in the Indian market until 1972 when a state-owned enterprise based in Lucknow, Uttar Pradesh, named Scooters India Ltd (SIL), bought the entire Lambretta manufacturing and trademark rights. A factory was set up in India and the new life of Lambretta took off along the bank of a different river, the Gomti.

The ownership change did not mark the immediate end of the history of the famed scooter in Italy, as SIL continued selling Lambrettas until 1985; however, the circulation of the logo had such a limited extent that it became irrelevant in the market vis-à-vis competitors. In 1985 the sale of Lambretta scooters stopped for good. However, the large-scale fame of the mark has never waned and nowadays the mark ‘Lambretta’ is still associated with the Milanese scooter.

From 2007 a Dutch company filed several new applications for the trademark ‘Lambretta’ (with slightly different graphical features) before the European Union Intellectual Property Office (EUIPO); all of them were regularly opposed by SIL. As the dispute became more and more heated between the parties, the Dutch company eventually decided to seek the cancellation of the earlier marks on the ground of non-use—in connection with vehicles and apparatus for locomotion by land, air or water in class 12—in Italy and before the EUIPO.

In March the Italian Supreme Court (Corte di Cassazione) finally ended the long-lasting Italian leg of the dispute and confirmed an earlier judgment of the Court of Appeal declaring revocation for non-use of ‘Lambretta’ national trademark registrations.

Use in the marketplace

Among the arguments set forth in the decision, the court declared that the complete loss of the distinctive character of a trademark is not required for it to be cancelled for non-use; there is no provision that makes the loss of the distinctive value of the mark contingent upon the cancellation for non-use.

Moreover, the court reaffirmed a principle that had already been maintained by the Supreme Court judges: to avoid cancellation, the trademark may be used infrequently and just locally, and it can be even used by third parties (with the consent of the owner), but such use must be sufficient to have an impact on the market and it must affect the competitors.

Consequently, even though the trademark ‘Lambretta’ is still vivid in the mind of consumers and it was visible back in 1988 when the three years of non-use grace period expired, Lambretta scooters were no longer on the market and their impact on competitors was virtually non-existent. Under these circumstances and regardless of its fame the court had no alternative but to declare the revocation of the mark on the ground of non-use.

This decision reminds us once again of the paramount importance of using a trademark on the market—by selling trademarked goods and services and by investing in advertising and communication—and confirms that notoriety is not tantamount to actual use under any circumstances.

It is also a reminder that any trademark owner must store systematically all the documents that may be used to prove the use of a trademark, including invoices, catalogues and advertisements, since any trademark, even the most notorious, can be challenged on the ground of non-use and, as the years go by, it becomes more and more difficult to gather documents from the past.

Andrea Cappai is an attorney at Bugnion. He can be contacted at:

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