Intel loses ‘inside’ claim in Italy

An Italian court has ruled that Intel Corp. is not entitled to claim trademark protection for the word “inside,” freeing a small PC assembler — and other companies — to continue using it in its logo.

“It was a comprehensive victory and Intel was ordered to pay costs,” said Silvestro Tedesco, director of SBF Elettronica SRL. “The court simply affirmed our right to a term that is in common use,” Tedesco said in an interview on Thursday.

The David and Goliath legal battle began in September 2003 when Intel served papers on SBF, calling for it to desist from using the logo “G Genoa Power Inside,” which, Intel claimed, could cause confusion with its own “Intel Inside” label. SBF has fewer than a dozen employees assembling PCs in the western Naples suburb of Fuorigrotta but refused to give way to the financial and legal might of the California microchip giant.

SBF had registered its trademark in Italy in 1993, using the “G Genoa Power Inside” labels to promote its higher end products. Paradoxically the PCs no longer contain Genoa mother boards because the company that produced them went bankrupt, Tedesco said.

Two judges from a Naples court specializing in intellectual property disputes ruled that the logos were so dissimilar that they could not possibly be confused by consumers. Their rejection of Intel’s complaint was handed down at the beginning of February.

The judges, Renato Lipani and Geremia Casaburi, said the logos were both graphically and conceptually different and that the word inside was not fundamental to either. As a result, the judges said, the word inside “can be used in other logos without infringing Intel’s property rights.”

The Naples ruling could have consequences that spread beyond Fuorigrotta, Tedesco said. There are at least 116 trademarks registered in the European Union that make use of the word “inside,” Tedesco said.

Intel was not immediately available for comment, but the company formally announced in January that it was retiring the “Intel Inside” branding campaign which begun in 1991 in favor of a new tag line: “Leap ahead.”

“This was the verdict that we were expecting and I think Intel was really expecting it too,” Tedesco said, of the trademark case.

On its part, the chip giant said it made the move as a way to unify its marketing efforts under a single focus to bring together its microprocessors and its Centrino mobile and Viiv home platforms. Previously, the company used the “Intel Inside” brand to solely refer to its microprocessors like its Pentium chips.