Injunction leaves HONDA counterfeiter with engine trouble

Italy

In Honda Italia Industriale SpA v Kama Italia Import and Export Srl (RG N 28/2002), the Court of Campobasso in southern Italy has confirmed its pre-trial decision granting the plaintiff a preliminary injunction prohibiting the defendant from distributing engines and generators manufactured by its Chinese parent company - Wuxi Worldbest Kama Machinery Co Ltd. In confirming the injunction, which it had issued as part of a summary judgment against the defendant, the court held that although the goods at issue carried different marks to those manufactured by the plaintiff, they were counterfeits or "slavish imitations" of its goods.

Honda Italia and Honda Logistic Centre SpA (Honda), Italian companies that form part of the Japan-based Honda Group, have been selling HONDA marked European-standard generators and engines in Italy for more than 20 years. Certain aspects of the design and form of these goods are not purely functional; they are aimed at clearly differentiating Honda products from those manufactured by other companies.

Honda brought an action against Kama Italia, arguing that the sale and distribution of engines and generators manufactured by Wuxi Worldbest was in breach of unfair competition law set out in Article 2598 of the Italian Civil Code. Honda claimed that Wuxi Worldbest's goods were counterfeits as they were almost identical to Honda's products. Honda moved for summary judgment against Kama Italia, requesting that the court issue a preliminary injunction prohibiting it from distributing the alleged counterfeits. The court granted Honda's requests.

At trial, the court affirmed its pre-trial ruling, holding that the goods Kama Italia distributed were counterfeits. The court reasoned that although differences between the two sets of products existed, including the fact that they carried different trademarks, they were minor differences. The essential form and design of the alleged counterfeits were very similar to Honda's products, said the court, and it was likely that average consumers, who by their very nature are not experts in this field, would be confused as to their origin.

Pietro Pouché, Carnelutti Studio Legale Associato, Milan

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