RTL 102.5, an Italian brand: applications from the German RTL Group have been rejected

He wanted to remove the three letters from the name of RTL 102.5, secure the domain rtl.it and stop use of the trademark even across the border. RTL Group – a German media giant that recently acquired Sky Deutschland and whose assets include the production company Fremantle – has, however, emerged from the Court of Milan with all its claims dismissed and several of its trademarks, in respect of their Italian elements, declared to have lapsed or be invalid.

This was decided by the first-instance judgement of the specialised corporate law division, handed down on 23 July and published in recent days: in the dispute between trademarks with identical names, reputation abroad ndoes not replace proof of rights in Italy. Back in April, the Court of Cassation had already dismissed the appeal by the RTL Group, confirming the co-existence of the trademarks. In Milan, however, the validity of the main RTL 102.5 trademark and the rights asserted by the group were under discussion.

The case, brought in 2021 by RTL Group SA, concerned the name, logos, social media accounts and programmes of the Italian broadcaster. The alleged offences were counterfeiting and registrations made in bad faith and unfair competition. The request also sought, in the alternative, to restrict access to the services to Italian territory. The Milan court rejected the case and ruled that bad faith had not been proven.

The chronology weighs heavily in favour of the rejection. According to the facts as accepted by the Court, Radio Trasmissioni Lombarde has been using the sign since January 1976, and the first application for registration was made in October ’91. Fifteen years of uncontested use prior to filing led the judges to recognise ‘the legitimate formalisationof an already existing right of prior use”. RTL Group has not demonstrated either the prior use claimed in Italia nor the infringing intent attributed to the radio station. Furthermore, according to the Court, the fact that a station can be listened to from France or Germany is not sufficient to confuse it with a French or German radio station. RTL 102.5’s website, app and programmes are in Italian and are aimed at those who understand the language. Nor does the English slogan ‘Very Normal People’ demonstrate an intention to expand.

On the other hand, the radio station’s counterclaims have been upheld. The Italian portions of various international trade marks have been declared to have lapsed due to non-use, in the absence of evidence of actual use within the national territory. “Beyond the various legal issues addressed,” comments lawyer Massimo Tavella, who represented RTL 102.5 – “it was important to protect the rights of a major business entity at a challenging time, when the company’s most strategic assets – not only the trade mark but also the goodwill built up over several decades of operation – have been repeatedly under attack.”