With a preliminary injunction handed down on October 31, 2014, the IP Court of Rome issued an interesting decision in the matter of eligibility for trademark protection, under Italian law, of the design and shape of a product. The case dealt, in particular, with the popular design bag named “Le Pliage”, manufactured and marketed by the worldrenowned French luxury fashion firm Longchamp, the shape of which Longchamp alleged to have acquired, over time, unregistered trademark rights that were enforceable against all abusive and unauthorized third party imitations.

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In that regard the Court found that, as a matter of fact, the shape of the “Le Pliage” bag model showed sufficient aesthetical peculiarities and distinctive features in terms of design originality and lines, contours, dimensions, finishes, styles, combinations of colours and materials, etc. as to be capable to acquire, in the eye of the consumer public, a unique distinctiveness and individual character among other products of the same kind.

Based on this conclusion, the Court also recalled that, under Italian law, when a distinctiveness of such kind can be actually found in the three-dimensional shape of a product, that shape can be eligible for protection as a threedimensional unregistered trademark, especially when the product has been enjoying, over time, a significant commercial success in the market and has become popular among the consumer public as to be widely recognized as a unique distinctive product originating from a specific firm, brand owner or manufacturer. According to the Court this was exactly what had happened, under the facts of the case, to “Le Pliage” bag, since its original and distinctive design rendered it popular and iconic to the average consumer – also due to the significant investments, advertising and promotional efforts sustained by the plaintiff - as to be immediately associated to Longchamp and the Longchamp brand, thus serving the typical trademark function as an indication of commercial origin.

It is finally to be noted that the Court, once it established that the bag at issue enjoyed trademark protection, held also that the plaintiff was entitled to seek enforcement against the defendant even though the allegedly infringing items were bad quality replicas and imitations that were sold at low prices and destined to a different target of consumer public. In fact, in the Court’s view, in light of the popularity reached by the design of the original product, also low quality imitations constitute a severe infringement, being capable to generate post-sale confusion and free-ride on the goodwill of the mark as to dilute its distinctiveness and commercial value in the marketplace.