Double victory before the EUIPO. The Italian IP firm Propria S.r.l., based in Pordenone and active in the field for over 30 years, has defended two 3D-trademarks (see images) in the European Union and won two nullity action proceedings. The contested object was in both cases a bottle, mirror-pink in one case and mirror-gold in the other, used in commerce for containing sparkling wine and pinot noir. According to counterpart, the trademarks lacked of distinctiveness as their shape is imposed by the product’s nature, necessary for obtaining a technical result, and gives value to the product. The Office has rejected counterpart’s arguments and sustained the counter-arguments of Propria, confirming the validity of the trademarks.

Confirmed success before the European Court of Justice. Not been satisfied, counterparty proceeded with its action even addressing the European Court of Justice to request the rejection of the decisions issued by the EUIPO and thus the nullity of the two trademarks. The European Court of Justice has however confirmed the motivations of the EUIPO and consequently those initially submitted by Propria through Milan-based attorney Raimondo Galli. With the judgment of the Court of First Instance (Sixth Chamber) 8 May 2019 in the cases T-324/18 and T-325/18, not appealed, a conclusion has been finally reached, establishing that the trademarks are fully valid.