The judgment A.M.A Company Limited v Tat-Taljan Company Limited, decided by the Court of Appeal on the 28 April 2017 concerned trademark infringement. The plaintiff company is the proprietor of the registered trademark ‘Nanna’s Ravioli’, which it had been using in relation to pastry and frozen pastry goods (ravioli in particular) since 2002 and subsequently registered in 2005. The plaintiff instituted proceedings against the defendant company for its use of the words ‘Ravioli della Nonna’ to market and sell its competing product.
The plaintiff issued a judicial protest against the defendant, in which it requested the defendant company to cease using the words ‘Ravioli della Nonna’ or any variation of their trademark in trade, however the defendant did not accede to this request and continued to use the Italian translation of the plaintiff’s registered trademark. The plaintiff company therefore requested the First Hall Civil Court to:
1. Declare that the defendant infringed its trademark under Article 10 of the Trademarks Act;
2. Declare that the defendant’s use of the words ‘Ravioli della Nonna’ is unlawful under Article 32 of the Commercial Code;
3. Liquidate damages suffered as a result of the above violations (in terms of Article 12 of the Enforcement of Intellectual Property Rights (Regulation) Act and Article 37 of the Commercial code;
4. Condemn the defendant company to pay the liquidated damages; and
5. Order the defendant company from ceasing to use the mark ‘Ravioli della Nonna’ in trade.
In its reply, the defendant contested the plaintiff’s claims on the basis that they are unfounded in law and fact as the two marks are clearly distinct and it gave examples of the differences between the plaintiff’s product and its appearance on the market and its own.
Before the First Hall Civil Court, the plaintiff argued that the defendant’s use of ‘Ravioli della Nonna’ is an infringement of its registered trademark as there is a likelihood of confusion. Article 10(2)(b) of the Trademarks Act states that an infringement subsists if the defendant’s sign is ‘similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered because there is a likelihood of confusion on the part of the public.’ Article 32 of the Commercial Code also prohibits traders from using any ‘name, mark or distinctive device...[if this is] capable of misleading others.’
In this particular case, the Court focused its analysis on the word ‘Nanna’ since ‘ravioli’ is a common word that could not be monopolised.
The Court made reference both local and European judgments on trademark infringement in its analysis of this case. First and foremost, the defendant’s mark must confuse the average consumer as to the true trade origin of a product, as this is the essential function of a trademark (O2 Holdings Limited and O2 (UK) v Hutchison 3G UK Limited). Secondly, the mark used by the defendant does not need to be identical for a likelihood of confusion to occur and therefore if there is a general impression of similarity or association, despite there being differences in the detail, the mark may still be deemed to cause confusion (Dr. Luigi Sansone pro et noe vs Dr. Philip Cassar Torreggiani et noe). The Court quoted Kerly’s Law of Trademarks, and held that only the main characteristics of a mark and its essential features are considered when assessing whether there is sufficient similarity that is likely to cause confusion.
The Court also quoted Kerly to shed light on the fictitious ‘average consumer’ who is the yardstick for determining whether there is a likelihood of confusion. Kerly states that the average consumer for the purposes of trademark infringement is a person who is ‘reasonably well informed and reasonably observant and circumspect.’ Furthermore, the plaintiff does not need to prove actual confusion, but merely a likelihood of confusion in order to succeed in preventing a competitor from using a similar mark to that of its registered trademark. If there is a likelihood that the average consumer may think that the two products are economically linked or confuse the commercial origin of the products, there is a likelihood of confusion resulting in trademark infringement.
Therefore, the First Hall Civil Court considered it irrelevant that the defendant’s product had different packaging and a different get up and it concluded that there was sufficient similarity between the plaintiff’s registered trademark and the defendant’s use of the words ‘Ravioli della Nonna’ for there to be a likelihood of confusion. The First Hall Civil Court ruled in favour of the plaintiff and ordered the defendant company to pay the liquidated damages to the plaintiff company.
The defendant company appealed the decision of the First Hall Civil Court, but the Court of Appeal felt that the first Court had correctly exercised its discretion in its examination of the case at hand and the pleas made.
The Court of Appeal made an interesting observation when it remarked that the defendant failed to contest the validity of the plaintiff company’s trademark ‘Nanna’s Ravioli’. Since the defendant did not contest the validity of the plaintiff’s trademark, it did not explore whether the registered trademark deserved protection or not.
Trademarks are given protection on the basis of distinctiveness in trade and therefore marks which are generic are either lose their protection or given limited protection. It could be argued that the plaintiff’s trademark is generic and therefore if it were to be allowed protection, this protection should be limited to a precise and identical imitation of the registered trademark. The Court however refrained from making this assessment as it was not requested to pass judgment on this point and therefore it confirmed the decision of the First Hall Civil Court.
Dr Elise Dingli is an Advocate at Ganado Advocates