Bari Appeal court confirms publication of Court’s decision can be ordered even when counterfeited goods have not been used and no damages are awarded.

On 5 November 2013 the Appeal Court of Bari issued a decision confirming that the publication of a court’s decision in national newspapers has a preventative purpose, aiming at discouraging future infringements, and that the risk of potential damages is sufficient to justify such a measure.

Background

The Bari Court had previously declared the nullity of the Appellant’s trademarks MAREAPERTO (word) and PESCE DI GALLIPOLI MAREAPERTO (fig.) for fish products on the basis of the Claimant’s prior MARE APERTO (word) and MARE APERTO formative marks in classes 29,30 and 31.

The Court rejected the Appellant’s counterclaim that the prior marks lacked distinctiveness in relation to sea products (MARE APERTO being the Italian equivalent for OPEN SEA) because the Claimant had established an enhanced distinctiveness acquired through use. Furthermore, the Court also ordered the cancellation of the Appellant’s domain name <mareaperto.biz> and the publication of its own ruling in the national Italian newspapers la Repubblica and Il Corriere della Sera, in double-sized font.

However, the Court rejected the Claimant’s request for compensation of damages, as no effective damages were proven.

Decision

An appeal was lodged against the publication of the Court’s ruling: in the Appellant’s view, said publication was not justified in light of the fact that no damages had been shown and given that the marks declared null had not been used on the market.

The Appeal Court however held that that the risk of potential damages is sufficient to justify such an action, on the grounds that it is merely a preventive measure. As a consequence, the Bari Appeal Court rejected the Appellant’s claim and confirmed that the publication of a court’s decision can be ordered even when counterfeited goods have not been used and when a prior right holder’s claim for damages is rejected.