Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu021, first published online: March 14, 2014
Associazione Sportiva Entella Chiavari 1914 v Virtus Entella, Court of First Instance of Genoa, Sezione specializzata in materia di Imprese, Order of 21 October 2013
In an interim decision an Italian court ruled that an unincorporated sport association is allowed to seek trade mark protection for the name and crest of a non-professional football team, provided that the place name included in the claimed marks is not a mere geographical indication.
Legal context
By Article 19 of the Italian Intellectual Property Code, any person can obtain the registration of a trade mark that he uses or intends to use for the supplying of goods and services of his enterprise. It is commonly believed that Article 19 allows a person, who does not have the qualification of enterprise according to the definition in Article 2082 of the Italian Civil Code, to register a trade mark. It is, however, not settled whether a person who carries out an economic activity falling outside the concept of enterprise in Article 2082 can invoke trade mark protection for the signs he uses for this activity.
Facts
The applicant, Associazione Sportiva Entella Chiavari 1914 (AS Entella), was an unincorporated sport association registered with the FIGC since 1977. In 2003, it changed its name from AS Entella to AC Entella to which it added the year ‘1914’. From then on, it used the name Entella for its football team, now playing in the lowest tier of the amateur league. In 2013, to celebrate the 100th anniversary of the foundation of the Entella football team, Virtus Entella organized many events and activities, including the sale of new kits with the name of former Entella players and celebratory shirts with the names of all the managers of the club.
Believing it enjoyed a trade mark right on the name of the Entella football club and that the activities of Virtus Entella mentioned above amounted to an unauthorized use of such mark, in August 2013 AS Entella commenced proceedings against Virtus Entella. AS Entella sought a judicial declaration establishing that it was the proprietor of an unregistered trade mark on the name of the football team as well as on the crest of the club. It also applied for an interim injunction to prohibit the defendant from using the claimed marks. In its defence, Virtus Entella contended that the applicant did not have the qualification of enterprise and, accordingly, under Italian law, was not allowed to enjoy trade mark rights.
Analysis
In the ensuing preliminary proceedings, in order to decide to award the interim relief sought by AC Entella, the Court of Genoa first had to consider whether the applicant was entitled to invoke trade mark protection for the litigated signs. The court took the view that the trade mark provisions applied only to entities that fell within the definition of ‘enterprise’ in Article 2082 of the Italian Civil Code.
Did an unincorporated sport association, such as Entella AS, constitute an ‘enterprise’? The court referred to case law on the interpretation of Article 2082 under which an entity is considered to be an enterprise when, thanks to stable organization, it consistently offers goods and services to the market and is able to cover its costs using the revenues generated by the sales. AS Entella contended that it met those criteria, and it argued that, despite its being an unincorporated association according to the law, it had to balance the costs incurred in the management of its football team with the revenues generated by it. The court substantially agreed with the applicant's submission that it qualified as an enterprise, though it hinted that the different legal forms of the parties might be of relevance when adjudicating the trade mark infringement claim on the merits.
In support of the finding that Entella AS was an enterprise, the court pointed to the regime for football clubs in force before the enactment of Act 91 of 1981 which considerably amended it. Under the previous regime, even the top-tier professional football clubs were organized as unincorporated sport associations. Notwithstanding this, it was universally agreed that those football clubs were indeed enterprises.
The next issue addressed by the court was whether the name of a football team which also included a geographical name could be protected as a trade mark. First, the court made it clear that trade mark protection also applies to the names of football clubs. Football clubs supply a service in the form of sport shows, such as football matches. The names of football clubs thus carry out the distinctive function of trade marks, enabling fans and consumers to identify the provider of those services. The possibility of registering the names of football clubs as trade marks is also confirmed by Article 8 of the Intellectual Property Code. This provision lays downs that it is possible to register as a trade mark a sign, if it is well known and is used in the field of sports, and in particular, the names or abbreviations of events or entities and associations not having economic purposes.
Finally, the court dealt with the question whether the geographic names of Entella and Chiavari contained in the disputed signs prevented them from being protected as trade marks. In short, the court ruled that the trade mark provision applied to the litigated signs, provided that the claimed trade mark was not a mere geographical indication.
The court then reached the conclusion that the applicant, since it had the qualification of an enterprise, could in theory invoke the trade mark protection for the name of the Entella football team and its crest; eventually, however, the court dismissed the claims of AC Entella. Indeed, the contention of the applicant that it enjoyed trade mark rights on the name and crest of the football team was at odds with the submissions made by the receiver for the AC Entella administration and FIGC. The receiver stated that such rights had not been assigned, whereas FIGC reported that the applicant only filed a ‘change of denomination’ request. The proceedings will now go on to adjudicate on the merits the claims of AS Entella, focusing on the conflict between the unregistered mark claimed by the applicant and the mark lately applied for by Virtus Entella.
Practical significance
In Entella, the court said that unincorporated sport associations may also fall within the definition of enterprise under Article 2082 of the Italian Civil Code. If it is the case, they can invoke the trade mark protection for the names and of emblems of their football teams. If the interim decision is upheld in the final judgment, Entella may have important implications for semi-professional and amateur football teams. The case makes it clear that also smaller football clubs can rely on the tools in the trade mark provisions to control the use and exploitation of their IP assets. In other words, the decision may strengthen their ability to monetize such assets through sponsorship and merchandising and, accordingly, to generate more revenue to fund their teams.
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