إيطاليا

This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 3: Well-Known Trademarks

Board of Appeal of the Italian Patent and Trademark Office [2025]: Case No. 8324

Date of judgment: April 28, 2025

Issuing authority: Board of Appeal of the Italian Patent and Trademark Office

Level of the issuing authority: Appellate Instance

Type of procedure: Administrative

Subject matter: Trademarks

Plaintiff: PEPSI Co.

Defendant: Clothing company

Keywords: well-known trademarks, food and fashion sectors

Basic facts: The case concerned a dispute between the Lay’s (food) trademark owned by PEPSI Co. and the Ley’s (clothing) sign.

The Italian Patent and Trademark Office (PTO) dismissed the opposition, reasoning that the products—food and clothing—were too different to create a likelihood of consumer confusion, despite the identical signs.

On appeal, however, the decision was overturned and registration was refused.

Held: The Appeal Board found that the mark Lay’s had a well-established reputation and overturned the examiner’s decision.

Relevant holdings in relation to well-known trademarks: The Appeal Board considered that since 1930, Lay’s has been used by the American snack manufacturer to identify popular products such as its classic potato chips, which are widely consumed and recognized globally.

Because of its reputation, the mark was entitled to extended protection, even beyond the traditional test of likelihood of confusion, also considering, in this specific case, the proximity between the food and fashion sectors.

The Appeal Board held that consumers encountering the third party’s identical sign would inevitably establish an “evocative link” to the famous brand, even if used for different products.

This amounted to unlawful exploitation (“hooking”) of the positive image of the well-known mark, creating a risk of dilution by tarnishment. Such conduct is prohibited under both national and European IP law as a form of unfair competition.

In this specific case, the Appeal Board also noted that the applicant had a history of filing trademark applications linked to famous symbols, later abandoned during the procedure. This practice was deemed a form of trademark trolling: applying for registrations not with the intention of genuine commercial use, but to exploit the system by threatening or suing legitimate companies using similar signs.

Relevant legislation:

-        Legislative decree N.30 /2005 (Code of Industrial Property), Article 12

-        EU Regulation 1001/2017 relating to EU trademarks, Article 8