We recently talked here on this blog of the motion filed by Barilla against an Italian company (“the respondent”) that sells pillows with shapes and names that are similar to those of some of the applicant’s goods. In the preliminary decision that we discussed, the appointed Judge found for the infringement of the Barilla trademarks corresponding to the names of the products concerned (Pan di Stelle, Galletti, Rigoli, Batticuori, Mooncake, Gocciole, Baiocchi, Abbracci, Ringo), holding that they were reputed and thus enjoyed cross-class protection. The Judge also held that the respondent had committed parasitic unfair competition under art. 2598(1)(3) of the Italian Civil Code as it unduly linked to Barilla’s products. As a result, she enjoyed the respondent from using, marketing and/or promoting the pillows in question by any means, in conjunction with the trademarks owned by Barilla or with similar signs evoking those of Barilla, ordered the seizure of the pillows and established a penalty of € 100.00 for any violation found after thirty days of communication of the order.
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Both companies lodged an appeal against that order. The two preliminary appeal procedures were reunited and were then decided by the Milan IP Court by order of 20 November, which entirely rejected the respondent’s appeal whilst partially granting Barilla’s appeal and so extending the protection granted to the latter.
The Panel of the three appointed Judges in fact found that, in addition to the already ascertained infringement of the Barilla trademarks, the respondent’s behaviour also amounted to unfair competition with regard to the reproduction of the shapes of the products in question, irrespective of the relevant trademark: “the slavish imitation, in a different market area that could potentially be occupied by the applicant through merchandising initiatives, enabled the respondent to parasitically exploit the investments that the applicant made for the placing on the market and the accreditation of its products up to turning them into a cultural phenomenon, leading the respondent to enjoy a competitive advantage that it did not contribute to creating, and undermining the ability of the applicant to give third parties a legitimate exploitation licence.” As a result, the order in question enjoined the respondent from any further marketing or promoting the pillows slavishly reproducing the shapes of the Barilla products (regardless of the name by which they are called), also establishing a penalty of € 100 for any violation found after thirty days of notification of the order.
The order also notes that “given that the conduct of the respondent operated primarily on the communicational plan, in which it misappropriated the promotion efforts made by Barilla, the applicants’ request can be granted, and this decision shall be published on the home page of the respondent’s websites, Facebook and Instagram pages for a period of six months starting ten days after the communication of this order.“