This is intended for experienced IP practitioners.

ITALY TRIBUNAL OF NAPLES: ORDER IN RE BARILLA ALIMENTARE S.p.A. VS. DANIS S.r.l. AND STEFANO DI FEDE AND OTHERS - ITALIAN TRADEMARK LAW ART. 1. LIKELIHOOD OF ASSOCIATION The order issued by the tribunal of Naples results to be of a particular interest, since a new interpretation of the concept of association has been given. According to art. 1(b) of Italian Trademark Law (RD No. 929 of June 21, 1942 as amended by D.L. No. 480 of December 4, 1992), ...The owner shall be entitled to prevent third parties not having his consent from using a sign which is identical or similar to the registered mark, in respect of goods or services which are identical or similar, if, on account of the identity or similarity between the two signs and of the identity or similarity among the products or services, a likelihood of confusion on the part of the public may arise, which may also consist in a likelihood of association between the two signs.... The Tribunal of Naples argued that the likelihood of association must be regarded as having a large and broad meaning, inclusive of all kinds of connections, even potential connections, or even psychological associations between two signs. In this particular case, the infringement consisted in a design trademark representing an ellipse containing a second ellipse and the word DANIS. 1) Barilla Alimentare S.p.A. 2) Danis S.r. The most distinctive element has been reputed by the Magistrate to be the double ellipse which is entirely similar to the double ellipse design registered trademark of Barilla Alimentare S.p.A (See Sample 1). In spite of the presence of differences, such as firstly the word DANIS as opposed to the word BARILLA, the Magistrate stated that the likelihood of association - particularly with respect to well known trademarks - is to be considered in a broad way. The present decision seems to be one of the few decisions which consider the hypothesis of infringement due to association. In this sense, on May 31, 1993, the Tribunal of Udine, in re Distillerie Nonino S.r.l.vs. Franco Furlan and Remo Buiese stated - in connection with the interpretation of the concept of association - that: the risk of confusion which can be involved according to art.1 of Italian Trademark Law, includes also the likelihood of association between signs, and must therefore be considered only with reference to signs. Confusion among products being not necessary. The most interesting aspect of this decision concerns therefore, in this case, the criteria adopted to determine whether a likelihood of association could be found, irrespective of the similarity of the products identified by the signs. Source and copyright 1997 JACOBACCI & PERANI

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