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05 August 2013
In an order of May 27 2013 the Court of Milan, Specialist Companies Division upheld an injunction prohibiting the manufacture, marketing, offer for sale and advertising of more than 200 types of copycat product (eg, tables and chairs) in the biggest case of unfair competition for imitation and infringement of unregistered shape trademarks ever heard in Italy.
The court also ordered the defendants to:
The case originated from the discovery by Pedrali SpA (a leading Italian company in the field of furniture production and winner of a Compasso d'Oro prize in 2012) of some copycat products. The features of these products were protected by design or model registrations owned by Pedrali. The copycats were later found to be part of a systematic programme of imitation implemented by two other Italian companies (Vela Arredamenti Srl and Iumex SpA), covering more than 200 types of product, which were put on the market by the defendants with the slogan, "The same as Pedrali's products, but cheaper." This is the biggest parasitical operation ever found within the Italian design market.
The Court of Milan, in a preliminary injunction of July 2 2012 (which extended a previous order granted ex parte), noted that the vast majority of Vela's and Iumex's productions were a "copycat imitation of almost all of Pedrali's products", to the extent that "they could not argue in their defence that it was a random selection of the most widespread products on the market". According to the court, this:
"confirmed the existence of a constant copying activity of Pedrali's entrepreneurial initiatives put in place by the defendants, leading to a systematic exploitation of the ideas and initiatives of Pedrali, in order to obtain in a short period of time a strong market position in the sector."
Subsequently, this decision was subject to review by the court's board, which confirmed the court's findings in a November 8 2012 decision.
The case mainly concerned the issue of unfair competition for parasitical exploitation and "direct exploitation of another's performance" under Article 2598(3) of the Civil Code, which punishes, among other things, unfair behaviour intended to harm the business of others - namely:
Moreover, the Court of Milan granted protection to the shape of some of Pedrali's products, considering them to be unregistered trademarks. In particular, the court noted that the shape of Pedrali's products represented an innovation in the relevant sector at the time, with the consequence that these products had acquired a degree of distinctiveness through constant use and widespread advertising. The defendants had developed "the same idea in different ways", thereby "strengthening the originality of Pedrali's products".
The decision is consistent with European case law, which has clarified in several decisions how a shape can have inherent distinctiveness or gain distinctiveness through use (eg, Mag Instrument v OHIM (Case C-136/02), Storck v OHIM (Case C-24/05 P) and Unilever v OHIM (Case T-194/01)).
This case also confirms the high level of protection granted in Italy to the shape of products, whether registered or not, and the efficiency of the specialist divisions of the Italian courts in handling IP matters.
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