Court orders defendant to buy back infringing products

In a ruling issued on June 27 2012 within the context of summary proceedings, the Specialised IP Division of the Court of Turin has ordered that the infringer of three designs owned by Blufin spa - the owner of the famous haute couture trademarks BLUMARINE and BLUGIRL - buy back the infringing products from the shops (even at market price) and withdraw the relevant advertising material. It is the first time that such a broad order - which is consistent with the provisions of the IP Rights Enforcement Directive (2004/48/EC) - has been issued.

Article 124 of the Italian Industrial Property Code provides that the courts may issue an "order to withdraw the (infringing) products from the market against the owners of the products or those who, at any rate, have them at their disposal" as a corrective measure at the end of proceedings on the merits. Furthermore, Article 131 of the code provides that such an order may be issued on a 'provisional' basis in seizure proceedings. Both provisions were introduced by Legislative Decree 140 of March 16 2006, which implemented the IP Rights Enforcement Directive.

Importantly, both Article 124 and Article 131 of the code provide that an order to withdraw the products from the market may be issued only "against the owners of the products or those who, at any rate, have them at their disposal". According to certain Italian scholars and the relevant case law, this rule obliges infringers to recover and remove infringing goods distributed "for sale on account" (ie, by way of a contract of sale or return). On January 16 2009 the Court of Milan had upheld an order (issued in preliminary proceedings) to withdraw the infringing products against an intermediary who had not been found guilty of infringement.

Previously, it was disputed whether such an order could apply to products which have been sold to independent resellers. In the present case, the Court of Turin clearly construed the rule in its wider sense, which is consistent with the underlying rationale of the legislation (ie, to remove all consequences of the infringing activity and prevent the same from having further effects on the market). The Italian court thus took another important step forward in the protection of IP rights.

The order of the Court of Turin is also significant with regard to the protection of design patents, especially considering that, in the field of fashion, design patents are not yet widely used to protect the appearance of clothes.

In the present case, protection was granted on the basis of three patent designs covering unique floral designs for clothing against low-cost, non-identical imitations manufactured by a Naples company. The infringer had carried out an intensive advertising campaign across the Italian peninsula through large billboards and advertisements in the most widely read women's magazines, thereby causing serious damage to Blufin’s image.

The Court of Turin recognised the innovative nature of Blufin's designs. Even though the copies were not identical to the original products, the court found that the copies were infringing, since they contained almost all of the elements that gave individual character to Blufin’s floral designs. This led the court to reject the infringer's argument that the similarity of the clothes was merely a "creative coincidence". The court's conclusion is in line with the Community Design Directive (98/71) and the Council Regulation on Community Designs (6/2002).

Cesare Galli, IP Law Galli, Milan