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17 September 2012
For the first time ever, an order issued by an Italian court to withdraw infringing products from the market additionally compelled the infringer to buy back the illicit products directly from stores at their retail price.
In a ruling issued on June 27 2012, the specialised IP division of the Court of Turin ordered the infringers of three design registrations owned by Blufin SpA – owner of the famous haute couture trademarks BLUMARINE and BLUGIRL – to buy back the counterfeit products from shops at their retail price and to withdraw associated advertising material. This is the first time in Italy that an order of withdrawal has been extended in this manner, which is consistent with the EU Enforcement Directive (2004/48/EC) on the judicial defence of IP rights.
Article 124 of the Industrial Property Code provides for an "order to withdraw the [infringing] products from the market issued against the owners of said products or those who, at any rate, have them at their disposal" as a corrective measure to be issued at the end of proceedings on the merits. Furthermore, Article 131 of the code provides for such an order to be issued on a provisional basis during preliminary injunction/seizure proceedings. Both of these rules were introduced in Italy by Legislative Decree 140, implementing the Enforcement Directive, on March 16 2006.
However, both Article 124 and Article 131 provide for an order to withdraw products from the market to be issued only "against the owners of said products or those who, at any rate, have them at their disposal".
According to Italian scholars and case law, these rules oblige the infringer to recover and remove from channels of commerce infringing goods distributed for sale on account (ie, under a contract of sale or return). For example, on January 16 2009 the Court of Milan upheld an order to withdraw an infringing product definitively from the market, issued in preliminary proceedings against an intermediary which was found not guilty of infringement.
It was disputed whether the order applied to products which had been definitively sold to independent resellers. The order clearly construed the rule in its wider sense, which is consistent with the underlying rationale of such measures – namely, to eliminate all of the consequences of the infringing activity and prevent it from having any further impact on the market. In this way, the Italian jurisdiction took another important step forward in defence of IP rights.
The order issued by the Court of Turin is particularly important in respect of its grounds regarding the protection of design patents, especially considering that in the field of fashion, such rights are not yet widely used to protect the appearance of items of clothing, except against identical imitations.
In the case at hand, protection had been granted on the basis of three design patents covering three unique floral designs for items of clothing against low-cost, non-identical imitations manufactured by a company based in Naples. This company had carried out particularly harmful infringing activity - supported by a pervasive and intense advertising campaign throughout Italy, with numerous large billboard images and advertisements appearing in dozens of women's magazines - which had seriously damaged Blufin's image.
The judge recognised the innovative nature of Blufin's clothing designs which, as she stated:
"differ significantly - including from the perspective of the general impression of the whole - from the many previous designs found by the infringer, among which it was not possible to find any clothes that were capable of challenging the creativity and the originality of its designs."
Even though the counterfeit products were not identical, the court held them to have infringed Blufin's designs, since they reproduced almost all of the dominant elements that lent individual character to Blufin's floral designs on items of clothing. This led the judge to exclude the infringer's argument regarding an alleged, but unlikely, creative coincidence.
The decision is consistent with the indications derived from the EU directive and regulation on design protection and the construction thereof, as commonly accepted at European level.
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