Italian Supreme Court rules that mere reproduction of Vespa image may amount to counterfeiting

Roman Holiday Vespa

Italian online IP resource Marchi & Brevetti has just reported a very interesting and recent decision of the Criminal Section of the Italian Supreme Court (Corte di Cassazione) regarding the crime of counterfeiting within Article 474 of the Italian Criminal Code.

More specifically, it its judgment on 17 March 2017 (sentenza No 13078/2017) the Fifth Section of the Supreme Court addressed the question whether the mere reproduction of the image of a Vespa [a well-known and iconic symbol of 'italianità', ie 'Italian-ness' and - more generally - Italian life-style] on gadgets (eg key rings) and T-shirts without also the reproduction of the word 'Vespa' [a registered trade mark] would amount to counterfeiting. 

Under Italian law counterfeiting is not just a matter of trade mark infringement [in this case, it would be trade marks held by Piaggio, which also produces quite a lot of Vespa-related merchandise] but also a conduct that is subject to criminal sanctions.

Background

The Rome Court of First Instance (Tribunale) had already found against the defendant, who appealed the decision before the Supreme Court and argued that his conduct would not fall within the scope of Article 474 of the Italian Criminal Code. This provisions states [translation by myself]:

"1. Except in cases of joint liability covered by Article 473 [ie counterfeiting, alteration or use of distinctive signs of creative works or industrial products], anyone who introduces into the territory of the State, in order to make a profit, industrial products bearing trade marks or other distinctive signs, whether national or foreign, that are counterfeited or altered, is punished with imprisonment between 1 and 4 years, and a fine between EUR 3,500 and 35,000.

2. Except in cases of joint liability in the counterfeiting, alteration, introduction into the territory of the State, anyone who is in possession for the sale, starts selling or otherwise circulates, in order to make a profit, the products mentioned above sub paragraph 1 is punished with imprisonment up to 2 years and a fine up to EUR 20,000.
3. The delicts sub paragraphs 1 and 2 are punishable upon condition that internal laws, EU regulations and international conventions on the protection of intellectual and industrial property are observed."

Kat Holiday Vespa

The core of the defendant's argument was that the crime within Article 474 of the Italian Criminal Code distinguishes between the concepts of, on the one hand, trade marks and distinctive signs and, on the other hand, products or objects. There would be no crime when one merely reproduces images of industrial products (like a Vespa) without also reproducing any trade marks or distinctive signs. In such case, there could be confusion among products, but not also trade marks or distinctive signs.

The decision

The Supreme Court rejected the defendant's argument.

Recalling an earlier Supreme Court decision (sentenza No 9362/2015), the court noted that even the mere reproduction of an image can fall within the scope of Article 474 as long as: (1) such image is a trade mark or a distinctive sign of the product; and (2) the reproduction has the potential to create in some way confusion among consumers as regards the origin of the good in question.

It follows that the material reproduction of a trade mark as such is not required for Article 474 to apply.

Comment

This decision is consistent with earlier Italian case law on this point. 

Even if the Supreme Court did not refer to decisions other than Italian ones, the ruling also appear consistent with relevant trade mark case law, including the seminal decision of the Court of Justice of the European Union (CJEU) in Adidas-Salomon, C-408/01. In the case the CJEU considered use of a sign as embellishment [this appears to have been to some extent the defensive line used in the case decided by the Supreme Court], and held that the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to trade mark protection where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark.