Unregistered shape of products may be protected against infringement

On September 15 2009 the Specialized IP Division of the Court of Naples granted a petition for an injunction filed by Deborah Italia SpA, a market leader in the field of cosmetics in Italy, finding that the slavish imitation of some of its products by the defendant amounted to unfair competition. The court also cited the provisions of the Italian Code of Industrial Property, thereby implicitly granting protection to the shape of the products as unregistered trademarks. In particular, the court held - in line with Deborah's arguments - that the defendant had "imitated the external individuating characteristics" of the packaging of the products, and thus recognized that such packaging could have distinctive character.
As such, this ruling represents an important step towards strengthening the protection of product shapes against imitation - especially as, in Italy, the shape, external appearance and packaging of goods are rarely registered as trademarks or designs. Under the Code of Industrial Property, the measures for the protection of registered trademarks (eg, seizure and destruction of infringing goods) have been extended to unregistered marks. However, the code does not specify the conditions for obtaining protection or the scope of such protection. The question thus remained whether unregistered trademarks benefited from the same protection as registered marks.
In the present case, the court answered this question in the affirmative, ruling that the (unregistered) shape of products may be protected against infringement under essentially the same conditions as those applying to registered trademarks. The Court of Milan had come to the same conclusion in its decision of January 17 2006. This case involved the shape of the Vigneto corkscrew, which is manufactured by Ghidini Cipriano SpA, a world leader in the production of wine accessories.
In the present case, the court:
  • issued an injunction preventing the defendant from producing, importing, advertising and selling the infringing products; and
  • ordered that the products be withdrawn from the market.
Furthermore, the court ordered that the defendant pay a fine and that the decision be published in the press to avoid further damage to Deborah's reputation. As both parties elected not to bring proceedings on the merits, the order became final under Article 669octies of the Code of Civil Procedure.
Cesare Galli, IP Law Galli Studio Legale Milan Brescia Parma Verona, Milan

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