Pioneering lawsuit filed in 'legal fakes' case

Italy
A pioneering lawsuit has been filed before the Court of Naples by the owners of some of the most valuable and well-known Italian and foreign luxury brands (eg, Gucci, Bulgari, Prada, Yves Saint Laurent, L'Oréal and Helena Rubinstein), together with Indicam (the Italian association of trademark owners for the fight against counterfeiting), requesting the cancellation of the trademark FALSO D'AUTORE (literally, 'fake of an artist'). The mark is being used in connection with a wide range of fake perfumes bearing the plaintiffs' trademarks which are manufactured and sold by a number of small Italian companies.
 
The defendants assumed that their conduct was lawful, since the presence of the FALSO D'AUTORE mark ruled out any likelihood of confusion among consumers. In particular, the defendants stated that:

  • they used the plaintiffs' trademarks only to differentiate the fragrances; and
  • such use complied with the law because the packaging of the goods clearly displayed the term 'fake', as well as phrases such as “trademarks used only in a descriptive way” and “there is no connection between the maker of this product and the owner of the trademark”.
These arguments have already been rejected in several other cases (both civil and criminal), but many consumers still believe that such products are 'legal fakes'.
 
The action before the Court of Naples is based on the argument that use of the trademark FALSO D'AUTORE is misleading, as consumers are led to believe that such products are lawful. The plaintiffs also argue that the trademark FALSO D'AUTORE is invalid since it is clearly linked to an illicit and criminal activity. The plaintiffs rely on Article 14(1)(a) of the Italian Code of Industrial Property, which states that a trademark shall not be registered (or, if registered, may be cancelled) if it is “contrary to the law, public policy or accepted principles of morality”.
 
The lawsuit is innovative in that it is based on new and wider definitions of 'deceptiveness' and 'unlawfulness'. The suit also relies on the concrete message conveyed by the use of the mark and the perception of such a message by consumers. This is in line with EU case law, according to which the courts must focus on the concrete use of a trademark, rather than dwell on abstract considerations.
 
The judge in charge of the case is Dr Geremia Casaburi, one of the most respected judges of the Italian IP specialized divisions. A decision on the matter is expected within the next year.

Cesare Galli, IP Law Galli Studio Legale Milan Brescia Parma Verona, Milan

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