The Court of Milan (Business Chamber “A”) recently issued an interim decision on the possibility of protecting the shape of a product as a trademark and against slavish imitation (order of 12 March 2015, docket no. 7639/2015). We talked about similar issues here and here on this blog.

The subject of the decision was the well-known high-range watch named “Royal Oak” created in 1972 by the Swiss company Audermars Piguet: the latter, which still sells it, registered the shape of the relevant bezel as an international figurative trademark, and claimed that the watches sold by the Milanese start-up D One s.r.l. infringed its trademark and slavishly imitated its product. Below are the pictures of the Audemars Piguet product, the relevant registered international figurative mark and the D One product in dispute:

Click here to view the image.

After an urgent motion filed in February by the Swiss company, the Court had initially enjoined – by an ​​ex parte order – the marketing of the D One products. Once the latter had joined the proceedings and submitted its defence, however, the judge hearing the case overturned the initial decision and rejected the motion, holding that there was insufficient evidence to supplement the “prima facie case” necessary to grant the interim requests (i.e. injunction, penalty for breach of the same and publication of the order).

In a nutshell, the decision concluded that “there are many elements that cast doubt on the validity of the enforced trademark“, as demonstrated by the fact that its registration as a Community trademark had been refused by the competent office (OHIM). In particular, according to the Court:

  1. as the mark consists of a “simple geometric design“, which is “unfinished-looking” and “now fairly common on watches“, it seems devoid of distinctive character, i.e. of the ability to “distinguish the products from those of another manufacturer and, therefore, carry out the function of identifying the commercial origin of the product”;
  2. the sign does not even seem to have acquired distinctiveness through use (so-called “secondary meaning“), “having not been proved a uniform use” of the sign itself;
  3. the registration of the shape in question as a trademark does not even seem compatible with Art. 9 Italian IP Code, pursuant to which “signs consisting exclusively of … the shape that gives substantial value to the product cannot be registered as trademarks“. In this regard, the Court believes that the shape in question gives the product “a particular market value, as it corresponds to the product design and results in an element that plays an important role in guiding the consumer’s choice, increasing the product’s attractive force“; hence, it could not be registered as a trademark (in accordance with what was stated by the EU General Court in relation to the Bang & Olufsen speaker in T-508/08).

As regards unfair competition, the judge firstly stated that it is not excluded by the different markets on which the two watches are sold (Audermars Piguet’s being a “product of the highest quality, a real jewel sold at about € 20,000“, and D One’s a “sports watch costing around € 150“). The judge stated that “in fact the potential expansion of the fair competitor must be taken into account, as the competitor could decide to extend its production to include lower-end product lines, using its accreditation on the market to infiltrate the lower price segment“. Nor is unfair competition excluded by the “notable difference in the materials and price to the public“.

However, the Court recalled that, in order to amount to unfair competition under art. 2598 co. 1 n. 1 Italian Civil Code, slavish imitation must “regard features that are quite inessential to the function that they are designed to fulfil“, i.e. those “arbitrary and capricious” features, “new compared to those already known“, that give originality to the product and have distinctive character, so that the public links them to the company from which the product originates: only when it regards these features, slavish imitation regards “elements that are able to deceive the public” and amounts to unfair competition. In the case at issue, the judge did not find for the existence of such an imitation, basically saying – on the basis of the same findings as those related to the trademark infringement – that the imitated shapes would be “structural and not distinctive“, and in some cases “suffered some standardisation“, and that in any case there would be “significant differences” between the two products.

One final note about the timing of the judgment: it took 7 days from the filing of the motion for the issue of the ex parte injunction, and a total of 30 days was required to get to the final decision on the motion. This attests to the efficiency and speed of our Business Chambers (and in particular that of Milan), which are capable of providing protection in times that are perfectly comparable to those of the main international courts.