The chain of Saint Anthony is broken. At this point, does the devil still wear Prada?
[:en]A few days ago, the Court of Cassation addressed a topic that is now part of everyday language: spam. This activity, also known as the "chain letter"is a vehicle used by many companies in order to recruit the largest number of people for economic purposes. The classic example and technique used is to entice surfers to subscribe to a service in exchange for a
homage.
In an attempt to stop this practice, the Supreme Court has ruled that the behaviour of website owners who focus their business on paying incentives to subscribers for the sole purpose of get data from new subjectsis to be regarded as unlawful in fact.
Specifically, the Court stated with Judgment No. 37049 of 2012, that "the conduct of the owner of websites focusing on the payment of incentives to members on the basis of the mere recruitment of new persons rather than on the sale of specific goods or services is unlawful".
The basis of this reasoning is mainly centred on the prohibition of 'pyramid selling' in theArticle 5 of Law 173/2005. This practice, in fact, is based on the propaganda activities of core business structures, focused exclusively on increasing the ranks of users and not on the promotion of any service or product.
Importantly, this practice is also unlawful if themembership is voluntary, since, as the Court states, 'the incriminating provision does not require involuntary adherence as a precondition for the existence of the offence'.
Interesting to see how this principle can and will be applied to the new world of social-network, certainly very suitable platforms for the development of such activities.
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The hosting contract and the hosting provider's liability profiles.
[:en]In recent years, the website is no longer a simple showcase used by companies to provide general information and indications on a company's activities, but rather a medium and tool for work and promotion.
Before addressing the contractual type of 'website creation', I consider it necessary to go into a very brief analysis of what is the basis of this entire contractual relationship, the ground on which web designers, in fact, carry out their activity: the web hosting contract. Just as land is needed to build a building, in the same way, web space must be acquired to publish a site. The basis of all this is therefore the so-called 'web hosting' contract, which could be defined as the contract by which a party acquires space on one or more servers owned by a hosting provideragainst payment of a fee.
The web hosting contract falls into the category of atypical contracts, i.e. those contracts that are not regulated and governed directly by the civil code, and ultimately consists of a provision of services. The hosting provider, more specifically, makes space available to another party on one or more computers to host pages web.
One of the most legally relevant elements in this type of contract certainly concerns the provider's liability for the data stored on its servers by the operators of the sites with which it has concluded a hosting contract.
This profile is regulated by Article 16 d.l. 70/2003 (legislative decree by which the Italian legislator transposed the EU directive 2000/31 EC). Pursuant to that article:
in the provision of an information society service consisting of the storage of information provided by a recipient of the service, the provider is not responsible for information stored at the request of a recipient of the serviceprovided that this provider:
a) is not actually aware of the fact that the activity or information is unlawful and, as far as claims for damages are concerned, is not aware of facts or circumstances that make manifest the unlawfulness of the activity or information;
b) not as soon as they become aware of these facts, upon notification by the competent authorities, act immediately to remove the information or to disable access.
L'Article 17 of the decree also provides that
the lender is not subject to a general surveillance obligation information it transmits or stores, nor to a general obligation to actively seek out facts or circumstances indicating the presence of unlawful activities.
In this regard, an important 2009 judgment of the Court of Romein which the Court sought to clarify and specify the scope of the aforementioned legal provisions, stating that "although the Internet provider is not subject to a general obligation to monitor on stored content, as this would result in unacceptable strict liabilityhe is however subject to liability when it does not merely provide access to the network, but provide additional services (caching, hosting ) and/or set up a control of information and, above all, when, aware of the presence of suspect materialrefrains from ascertaining the unlawfulness and from removing it or if, being aware of the unlawfulness, omits to take action".[1]
The Court, therefore, given that there is no general obligation of surveillance, considered necessary for the establishment of civil liability on its part, the knowledge and awareness on the part of the provider of unlawful information or of facts and circumstances which make that unlawfulness manifest, and the failure to remove that information as soon as it becomes aware of those facts and upon notification by the competent authorities. [2]
The Court of First Instance, in this judgment, takes up the concept of strict liability, according to which a person may be liable for a tort, even if it does not result directly from his or her own conduct and is not attributable to the person's own wilful misconduct or fault. This deviates from the general principle of liability, according to which a precise causal link between the individual's conduct and the tort itself is required.
This article, however, must be regarded as a pure and simple outline of a very complex, detailed and constantly evolving subject. A kind of small explanation of what are the legal relations between new types of subjects. Interesting, however, to see how, although the instruments within society evolve, the categories and legal institutions of the civil code always remain the only true basis for regulating commercial and social relations.
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Good faith in the performance of a contract
In recent years, doctrine and jurisprudence have gone so far as to broaden the concept of good faith in contractual performance, defining more and more extensively what are the actual obligations of the parties at all stages of the contract's performance.
It is a well-established principle that good faith, i.e. mutual loyalty of conduct, must govern the performance of a contract, as well as its formation and interpretation, and accompany it at every stage. This obligation therefore requires consideration to be given to interests that are not the subject of specific protection and to fairness of conduct in the performance itself.
Good faith in the performance of the contract, therefore,
".....is embodied in a general obligation of solidarity requiring each party to act in such a way as to preserve the interests of the other, irrespective of both specific contractual obligationsuali, as from the , this commitment to solidarity finding its primary limit solely in the self-interest of the subject, bound, therefore, to the performance of all legal and/or material acts that are necessary to safeguard the interest of the other partyinsofar as they do not entail an appreciable sacrifice on its part....."[1]
It is also recalled that
".....the conduct in good faith and fairness of the individual contracting party is aimed, in compliance with the balancing of the respective interests, at protecting the positions and expectations of the other party; in this context, it is legitimate to configure as components of the binding relationship the duties instrumental to the satisfaction of the rights of the contracting parties, so that it has been held that even the mere inertia conscious and intentional, which is an obstacle to the fulfilment of the other party's right, adversely affecting the end result aimed at in the contractual settlement of the opposing interests, contravenes the duties of fairness and good faith and may therefore constitute a breach of contract.or".[2]
Therefore, the duty of good faith is not only synonymous with refraining from carrying out acts detrimental to the interests of the other partybut must be interpreted as a proactive obligation of one party to put in place all those attentions aimed at avoid prejudice to the positions of the other contracting party.
It has been held, in fact, that jurisprudence, starting from the assumption that even inaction on the part of a contracting party may cause damage to the other party, has held that omissive conduct may be considered contrary to good faith if it does not appear that the inaction was dictated solely by the contracting party's need not to harm its own interests.
The duty of good faith must lead the parties to conduct themselves in such a way as to preserve the interests of the other contracting party, and the only limit to this obligation is the contracting party's own interest.
For a penny. The new company at 1 euro.
[:en]Talking a few days ago with young entrepreneurs, operating in the start-up sector, we wondered about the actual advantages that the introduction of the new 1 Euro company (SRLS - Società a Responsabilità Limitata Semplificata), introduced on 29.8.2012 by the Dm 138/2012.
To get a clearer idea of the features brought about by the new Art. 2463-bis of the Civil Code, it is recalled that:
- the company may be established by natural persons who have not completed their thirty-five years of age on the date of incorporation;
- the memorandum of association must be drawn up by public deed in accordance with the standard typed model;
- the share capital must be between 1 e 10.000 €, subscribed and fully paid up at the date of incorporation;
- the contribution must be made in money and be paid to the administrative body;
- the directors must be chosen from among the shareholders;
- the memorandum of association and entry in the commercial register are exempt from stamp and secretarial duties and no notary fees are payable (registration tax of € 168 and the annual fee to the Chamber of Commerce must therefore be paid).
Reading the regulatory text and also checking the comments of various blogs, law journals and newspapers, it can be seen that this form does indeed bring cost relief (no notary fees are due), but that it does not actually solve what are the real problems of entrepreneurs under 35, namely:
- preferential tax regimes;
- tools for facilitate access to financing bankers or subsidies state;
It is necessary to remember that the problem of social capital is in fact relative, suffice it to say that the 10 thousand euro of capital required to set up a normal limited company, do not remain frozen in the bank, but may be used by members. In fact, once established, the sum is actually paid into the company's account and can be used to buy machinery, computers, pay salaries and suppliers, register trademarks and so on. Furthermore, if there are at least two partners, it is sufficient to pay EUR 2,500, a sum that can in turn be used for the fulfilments just mentioned.
In addition to this, the costs for starting up a company will always have to be borne by the young entrepreneurs, who, no matter how lean and light the company may be, will still need to invest a few thousand euros to operate it (computers, machinery, suppliers, etc.).
Lastly, it is noted that the memorandum of association, having to be drafted in accordance with the standard typed model, is, according to a first reading of the provision, not subject to any variation. This feature, which certainly makes it possible to avoid notary fees, is in fact a limitation that is by no means negligible. Suffice it to say, in fact, that such standardisation would make it impossible for the company's managing partners to activate all the options that the law allows in the articles of association of an LLC. These include:
the power to grant special rights to shareholders;
- the possibility of agreeing on clauses concerning the transfer of shares in the capital (such as non-transferability, pre-emption, approval, clause disposing of the share in the event of the death of the shareholder, co-sale clause, etc.);
- the possibility of agreeing on causes of termination other than those provided for by law;
- the possibility of stipulating grounds for exclusion from the company;
- the provision, in the case of more than one director, of forms of administration other than the BoD;
- the possibility of providing for a longer deadline for the approval of the budget than the statutory one;
- the possibility of providing for forms of decision-making by the shareholders other than the general meeting;
- the possibility of giving shareholders the competence to decide on matters other than those attributed to shareholders by law;
- the possibility of providing for meeting quorums other than those prescribed by law.
It will certainly be interesting to see how this instrument will be used by new entrepreneurs and to see if this means is an effective incentive for new entrepreneurship.
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The transferability of iTunes products to third parties.
[:it]It is becoming increasingly common and easy for the network user to be driven to buying via the internet products, such as music tracks or films.
The ease of purchase, the possibility of remote access to one's account, the transferability to mp3 players or smart-phones, means that consumers increasingly prefer to use multimedia rather than physical media.
One wonders at this point whether the difference between these two modes of 'purchase' is simply limited to a product choice, or whether there are actual practical-legal consequences.
On this point, the Hollywood actor, Bruce Willis, recently made a criticism that can certainly be a good starting point for a brief legal reflection. Can the iTunes library be bequeathed?
Apple has stated, to the surprise of many users, that such assets are not transferable to third parties.
In fact, following a careful reading of the iTunes Terms and Conditions of Useit is found that not so much the individual files, but the (usage) licences for the digital content are defined as iTunes products. The main difference, therefore, between the purchase of a CD and a digital album is that in the former case, ownership of the physical good is actually transferred, whereas in the latter, one simply buys a licence for use staffhence the licence to use the file itself for purely personal and non-commercial use.
Also, if you read the iTunes Terms and Conditions of Use, you will see that the holder of an iTunes account has no right to modify, rent, lease, lend, sell, distribute, or create the purchased licences, (also referred to as non-transferability clause). Therefore, the account holder has the right to use the files for purely personal purposes, without any possibility of transferring them to third parties and thus bequeathing them.
This topic, which will always appeal to a wider segment of the market, is therefore not without interest, considering that online purchasing increasingly concerns not only music files, but also films and e-books.
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The unlawful use of the 'meta-tag'. Trade mark infringement and unfair competition?
[:it]For meta-tag refers to those keywords, usually encoded in HTML, which, although not shown on screen, are nevertheless used by search engines in order to index the various sites. Through a meta-tagThus, the operator of a site can enter keywords concerning his or her own web page (c.d. keyword meta-tag) in order to make it through the use of search engines.
Potentially, therefore, a site operator could insert the name of a very famous brand as a keyword in order to have its site appear among the first results each time a user performs a search using the name of the well-known brand, or, insert the brand of one of its competitors in order to appear among the results each time a search is performed by a consumer indicating the brand of the competing company as a keyword. (E.g., the company XYZ S.R.L., which operates in the furniture manufacturing sector, uses the trademark of the competitor company 123 S.P.A. as meta-tag)
The question arises in doctrine and jurisprudence as to whether such conduct may in itself constitute an offence, given that the name or trademark of others is not placed externally on the site, but remains visible only to search engines.
There are potentially two possible offences: unfair competition and trade mark infringement.
1. Unfair competition
As for unfair competition, the Court of Milan, in the now well-known 'Solatube' case, ruled that: "the use by a competing company of a 'meta-tag' reproducing the trademark of the legitimate owner company constitutes unlawful competition imputable under Art. 2598 no. 3 civil code.as determining the constant and undue matching in the search results on the various web search engines capable of leading to a diversion of customers in violation of the principles of fair trading."[1]
2. Trademark infringement
The aforementioned judgment, which establishes the existence of a violation of Art. 2598 no. 3 civil code., states that the use by a competing company of a meta tags reproducing the trade mark of another company does not constitute an infringement of the trade mark as it lacks any distinctive function of services and goods.
On the contrary, according to authoritative doctrine, if a party uses as a meta-tag a trademark of one of its competitors, such practice would also constitute a hypothesis of infringement of the exclusive trademark right pursuant to Articles 12 and 22 of the IPC (Industrial Property Code). Such an infringement would, in fact, extend to non-related goods and services if a well-known trade mark is used as a meta-tag.[2] In support of this thesis, part of the doctrine holds that it is also reasonable to recognise the meta-tag advertising function in a broad sense.[3]
3. Subliminal Advertising
Finally, part of the doctrine is inclined to believe that the use of this practice might even be considered as a form of subliminal advertising Article 5.3 legislative decree 145/07, which provides that advertising must be clearly recognisable as such.[4]
REVIEW
- the use by a competing company of a 'meta-tag' reproducing the trade mark of the legitimate proprietor company constitutes an unlawful competition offence imputable under Article 2598 no. 3 of the Civil Code
- according to authoritative doctrine, the use of one's own competitor's trade mark as a meta-tag would also constitute an infringement of the exclusive trade mark right under Articles 12 and 22 of the IPC
- Finally, part of the doctrine is inclined to consider that the use of such a practice could even be regarded as a form of subliminal advertising covered by Art. 5.3 Legislative Decree 145/07
[1] Court Milan, 20/02/2009, Riv. dir. ind. 2009, 4-5, 375 (note TOSI)
[2]Riv. dir. ind. 2009, 4-5, 375 (note TOSI); E. TOSI, Diritto privato dell'informatica, DNT, 12, 490 ff.; CASSANO, Orientamento dei motori di ricerca, concorrenza sleale e meta-tag, in Riv. dir. Ind., Milan 2009, 56
[3] Cf. the TOSI, in the note to the Milan Court judgment of 20.2.2009: "in support of the foregoing, the broad provision of Article 2(A) of Legislative Decree No. 147 of 2 August 2005 [...] states that 'advertising shall mean any form of message that is disseminated, in any manner whatsoever, in the exercise of a business activity for the purpose of promoting the sale of goods, the performance of works or services'.
[4] BONOMO, The domain name and its protection. Typology of confusing practices on the internet, 247 ff.; PEYRON, Internet meta-tags as a new means of trademark infringement and hidden advertising: a US case, in Giur. It., 1998, I, 739 ff.
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The shareholder's conflict of interest in shareholders' meeting resolutions.
[:it]Conflict of interest could be defined as the limitation that the shareholder encounters in his right to vote.
It is important to remember that two prerequisites are necessary for this to be effectively configured:
- that the partner pursues its own end
- that said end contrasts concretely with the general interest of society[1]
The question therefore arises as to what happens if a shareholder with a conflict of interest votes on a resolution of the shareholders' meeting of a public limited liability company to bring a corporate liability action against the director.
While theArticle 2373 of the Civil Code prior to reform expressly sanctioned a ban on voting by the shareholder in conflict of interest, the current layoutInstead, it gives the shareholder the choice between voting by renouncing his potentially conflicting personal interest or abstaining from voting.
Should the latter opt for abstention, Art. 2368 para. 3 provides that the shares are counted towards the attainment of the quorum constitutivebut not for the purpose of calculating that deliberative. It is important to note that the contestability of the resolution is rightly subject to the fact that the vote of the shareholder in conflict of interest was decisive in reaching a quorum.
Therefore, the shareholder's voting right is remitted ex Article 2373 (1) to its appreciation of the consequences that may ensue. The resolution of the shareholders' meeting therefore retains its validity intact unless it was passed with the casting vote of the conflicting shareholder. The latter will then be free to choose whether or not to abstain from voting.[2]
Another question is whether the shareholder-directors may vote on resolutions concerning their respective liabilities. In fact, although Art. 2373 para. 2 expressly states a prohibition for such a hypothesis, the question arises as to whether the shareholders' meeting is called upon to resolve on a liability action of director Caius, Tizio (also a shareholder-director), may exercise his voting right.
An important arbitration award recently expressed itself on this point, stating that: "at in accordance with the principle of vicarious liability, the shareholder's vote on the liability of the other directors is admissible and must therefore be counted towards the quorum for passing a resolution, the prohibition under Article 2373(2) of the Civil Code applying only when the resolution concerns the liability of the voting shareholder himself and not when the resolution concerns the liability of another director"[3].
ABSTRACT
- for the conflict of interest to exist, it is necessary that the shareholder pursues its own end and that this end is in concrete conflict with the general interest of the company
- the current provision of Article 2373 gives the shareholder the choice between voting by renouncing his potentially conflicting personal interest or abstaining from voting
- in the event of abstention, Art. 2368 para. 3 provides that the shares are counted for the purposes of reaching the constitutive quorum, but not for the purposes of calculating the deliberative quorum
- the appealability of the resolution is subject to the fact that the vote of the shareholder in conflict of interest was decisive for the attainment of the quorum
- Although Art. 2373 para. 2 prohibits member-directors from voting on resolutions concerning their respective liabilities, in accordance with the principle of vicarious liability, the vote of the member-director on the liability of the other directors is permissible
[1] It must be borne in mind that the interest must be objectively in conflict with the corporate interest. If this is not demonstrated, the resolution cannot be annulled, even if it turns out that the vote was cast e.g. out of personal spite against the directors or to gain an advantage over the other shareholders (Commented Code of S.p.A., Fauceglia - Schiano di Pepe, 2007, UTET)
[2] Corporate Law, Gastone Cottino, pg. 346 ff., 2006 CEDAM
[3] Arbitration Board, 2 July 2009, Jur. comm. 2010, 5, 911, note De Pra
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Thanatological damage or immediate death.
[:it]The 'tanatological damage' must be brought within the sphere of moral damage, in its broadest exception, i.e. as the suffering of the subject who consciously witnesses his or her own death.
On this point, the most authoritative jurisprudence teaches that the so-called "Thanatological damage"or immediate death must be brought within the dimension of non-pecuniary damage, understood in its widest exception, as the suffering of the victim who lucidly witnesses the extinguishing of his or her life and, therefore, can only be such that of the victim surviving at least for an appreciable length of time after the accident and before the final outcome.
Hence, the claim for damages from "loss of the right to life"or 'tanatological damage', brought jure hereditatis by the heirs of the deceased, is not admissible when the occurrence of the fatal event takes place immediately or a short time after the harmful event, since this entails the loss of the legal asset of life in the person's hands, which cannot result in the simultaneous acquisition in the victim's estate of a corresponding right to compensation, then transferable to the heirs.
There have also been quite recent rulings on this point, and among these we can mention, in particular, the Court of Rovigo which verbatim reads '... the non-pecuniary damage jure ereditaria cannot be recognised ... because A.R. suffered intensely for less than an hour ... circumstance that, although touching from a 'moral' point of view, does not fulfil the prerequisites required by the Supreme College to consider that the right to claim has entered the legal sphere of the injured party: an appreciable period of time ...".[1]
To conclude, in hypotheses such as the one above, only one damage could be identified, namely that consisting in the suffering endured by the victim's relatives over the death of their relative.
The Supreme Court recently pronounced on this issue, confirming a well-established jurisprudential direction.
"Injury to the right to health occurs when the person remains alive with an impairment and only when there is a time lapse between the harmful event and death that makes the right to compensation accrue, which is consequently transmissible to the heirs. Consequently, compensation for tanatological damage "iure hereditatis" does not arise when death occurs immediately as a consequence of the injury, since in this case there is no injury to the legal right to health.".[2]
ABSTRACT
- the 'tanatological damage' or 'immediate death damage' must be brought within the dimension of moral damage, understood in its broadest exception, as the suffering of the victim who lucidly witnesses the extinguishing of his or her life
- the claim for damages for 'loss of the right to life' or 'tanatological damage' brought by the heirs of the de cuiusis not permissible when, the occurrence of the fatal event takes place immediately or a short time after the harmful event
- in the event of immediate or near-immediate death, damage that could be identified in the relatives of the victim would consist of the damage resulting from the suffering suffered by them due to the death of their relative
[1] Court of Rovigo - Sez. Dist. Di Adria - 02.03.2010
[2] Cass. Civ. 2010, no. 79In the same sense, Cass. Civ. 2009, no. 458; Trib. Milan, 10.4.2008, no. 4954
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Burden of proof in the event of a claim for non-performance. United Sections and minority orientations.
[:it]On the subject of civil liability, the question of the burden of proof of the creditor acting in order to claim the non-performance of an obligation has seen the jurisprudence and doctrine heavily engaged, especially before the advent of the judgment of the S.ections of the Supreme Courtwhich intervened in order to
define a jurisprudential contrast.
The two guidelines are briefly recalled:
The majority one held that the aggrieved party also has the burden of proving the fact giving rise to the termination, i.e. the non-performance and the circumstances pertaining thereto, according to which it takes on legal significance, it therefore remaining for the defendant to prove the absence of fault only if the plaintiff has actually proved the fact constituting the non-performance.[1]
This orientation was mainly based on the distinction between the remedies provided for in Art. 1453 of the Civil Code (performance, termination, damages). It was observed that while in an action for performance the constitutive fact is the title, in an action for termination there are two constitutive facts: the title and the non-performance. Therefore, the evidence required under Art. 2697 of the Civil Code is different because the constitutive facts are themselves different. In the first case, therefore, proof of the negotiated or legal source of the right of claim will be sufficient, in the second case proof of both the title and the debtor's actual non-performance will be required.
The minority view, on the other hand, held that the burden of proof on the creditor is the same regardless of the action brought by the latter. Specifically, the creditor under Art. 2697 of the Civil Code must simply prove the negotiated or legal source of its right, whereas it is the creditor that will be burdened with proving the extinguishing fact of that right, constituted by the fact of performance.
This argument was based on the fact that the claims for performance, termination for non-performance and damages for non-performance are all linked to the same assumption, namely non-performance. This homogeneity implies that the principle of the presumption of the persistence of the right under Art. 2697 of the Civil Code, according to which once the creditor has proved the existence of a right, the burden of proving the existence of the extinction event is on the debtor, should apply to each of the cases listed in Art. 1453 of the Civil Code.
Le United Sections in 2001 Judgment No. 13533 adhered to the minority orientation, also stating that "is in conformity with the need not to make excessively difficult the exercise of the creditor's right to react to the non-performance, without, however, penalising the right of defence of the non-performing debtor, to apply the principle of traceability or proximity of proof, placing the burden of proof on the party in whose sphere the non-performance occurred".[2]
It should be noted, however, that there have recently been a number of court rulings which, in contrast to the now rather dated ruling of the Unified Sections, go on to state that "whatever the basis of the plaintiff's claim for damages, it is undoubtedly incumbent on the party claiming damages to prove not only the harmful event, but above all its causal traceability to the wrongful act of others."[3]
ABSTRACT
- According to the Unified Sections of the Supreme Court of Cassation On the subject of proof of non-performance of an obligation, a creditor suing for contractual termination, damages or performance only has to prove the source (negotiated or legal) of its right and the relevant time limit, limiting itself to the mere allegation of the non-performance of the other party, whereas the defendant debtor bears the burden of proof of the extinguishing fact of the other party's claim, which is the fact of performance.
- there are some judgments that have recently stated that On the subject of the burden of proof, on the creditor acting for performance, termination or compensation for damages, there is not only the proof of the performance of his obligation, but also the proof of the exact performance and, therefore, it would seem to be applicable also to the hypotheses of defects or non-conformity of the work, as they fall within the category of inexact performance
[1] See for example, Cass. Civ. 4285-94; 8336-90; 8435-96;124-70
[3] Court of Novara, 27/04/2010, no. 435 (in the present case, the owner of a car that caught fire has not proved that the fire was caused by a defect in the functioning of the car and/or a hidden defect and/or a problem with the car's equipment attributable to the seller); Cf. Court Nocera Inferiore, section I, 07/02/2012, 'On the subject of the burden of proofagainst the creditor acting for performance, termination or the compensation of damagethere is not only the proof performance of its obligation, but also the proof of the exact performance and, therefore, would seem to be applicable also to the hypothesis of defects or non-conformities of the work, as they fall within the category of inexact performance.
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Internet law II. The trade mark and the TLD.
[:en]The domain name consists of a Top Level Domain (TLD) and by a Second Level Domain (SLD). THE TLD can essentially be of two types, generic (gTLD) (when it is appropriate to distinguish, in principle, the sector of operation - e.g. .com for commercial activities and .org for organisations non-profit) or geographical - country code Top Level Domain (ccTLD) (when it is capable of signalling the 'virtual' location of the computer).
Consider, that there is no guarantee that, in practice, to a geographical domain, for example .en for Italy, .fr. for France and so on, actually corresponds to a computer located in the territory evoked by the ccTLD.
The assignment of domain names is carried out by bodies whose task is to establish the procedures for registering domains and assigning them to applicants marked by the country code '.it'. Each state has its own bodies in charge of these functions, and each country operates independently, as the various states are distinguished by their own country codes (.de, .fr, .nl, .be). It will therefore be possible for the same domain name to be used by different parties in different states and for the addresses to differ only by country code (e.g. '.www.esempio.it" e www.esempio.de"). On the basis of the above, the Internet being a worldwide platform, regulated by independent state bodies, it is evident that the risks and opportunities for confusion between domain names used by trade mark owners operating in different parts of the globe, will be increasingly numerous and frequent.
The question therefore arises as to whether the owner of a trade mark registered in Italy may take action to prevent a third party from using a domain name containing his company's trade mark if it is characterised by a different TLD (e.g., "the trade mark of the company"). www.abcd.it and www.abcd.fr).
Here too, a distinction must be made between renowned and non-renowned brands
a) renowned brand cases
According to doctrine and case law in the case of trade marks with a high reputation, the problem of the TLD does not even seem to ariseas the counterfeiting of the sign is also in re ipsa related to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use.[1]
b) cases of non-renowned trade marks
In trade mark cases so to speak sic et simpliciter, it does not seem tenable to assert that the owner of a registered trade mark, which is neither well-known nor well-known, can oppose the registration of an identical or similar domain name, but with a different TLD (e.g. .it and .de).
In fact, since the law on trade marks applies only in a national context, the owner of a trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory and cannot therefore prevent a third party from registering abroad a domain name equal or similar to that trade mark, but with a different TLD.
In any case, it must be considered that if the third registers the domain name abroad in order to direct users to its own site where it in fact advertises or sells certain competitive goods or services, in which case the territory in which the cotraffactive sign is placed on the network is irrelevant (e.g. formaggitaliani.it and formaggitaliani.com).
Indeed, given the global nature of the Internet communication system, each user, including Italian users, will be able to connect to the site corresponding to the domain name possibly confusable with the registered trade mark.[2]
It can therefore be considered that "the proprietor of the trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory, and cannot prevent a third party from registering abroad a domain name equal to or similar to that trade mark within a [different] geographical or thematic TLD, unless its use for offering for sale or advertising goods or services results in an infringement of the right.[3]
In conclusion, therefore, it is held that the owner of an Italian trade mark cannot prevent a third party from using a domain name confusable with the said trade mark if it bears a different TLD, at least that such registration has infringed the proprietor's right to use the trade mark, since it is likely to direct users to a website on which identical, similar or related goods or services are offered or advertised.
On the basis of the above, however, it is considered necessary, given the complexity and specificity of the discipline, for this opinion to be used as a guideline and for individual cases to be analysed specifically.
- The TLD can essentially be of two types, generic (gTLD) (when it is used to distinguish, the sector of operation (.com), business (.org) or geographical (country code Top Level Domain ccTLD) when it is capable of signalling the 'virtual' location of the computer (.it, .de)
- The question therefore arises as to whether the owner of a trade mark registered in Italy may take action to prevent a third party from using a domain name containing his company's trade mark if it is characterised by a different TLD (e.g., the "TLD" of the company's trade mark). www.abcd.it and www.abcd.fr)
- In the case of well-known trade marks, the problem of the TLD does not even seem to arise, since the counterfeiting of the sign is also in re ipsa linked to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use
- in the cases of non-renowned trade marks can therefore be considered as '.the proprietor of the trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory, and cannot prevent a third party from registering abroad a domain name equal to or similar to that trade mark within a [different] geographical or thematic TLD, unless its use for offering for sale or advertising goods or services results in an infringement of the right
[1] Court of Reggio Emilia 30.5.2000 (ordinance); Peyron, Giur. it. 2001, 96.
[2] Court of Reggio Emilia 30.5.2000 (ordinance)
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