Neither Italian statutes, nor case-law provide a clear definition of trade-dress and look-alike items.
However, the increasing role played by product packaging in communicating a brand’s value, as well as the number of items, that imitate well-known branded products, adopting very similar packaging sizes, types, shapes, graphics, fonts, pictures, etc., are causing great concern for manufacturers of branded products.
Look-alike items – also known as copycats, or parasitic copies – usually have packaging designs that closely mimic those belonging to familiar branded products, in terms of shape, colours, surface appearance, graphic features and/or descriptive words, taken from the label of the original products, but without copying the brand owner’s principal trademarks/trade-name. As a result, in past years, decisions issued by Italian Courts were not consistent, in selecting which provisions of the law should be applied to protect the appearance of products.
In fact, in comparing the products at issue, Courts, once grounded their reasoning on the general principles of unfair competition, according to Section 2598 of the Italian Civil Code, thereby applying the broader rule of professional fairness, or of the likelihood of confusion between the compared products.
In this respect, a few recent decisions should be highlighted, since they have directly applied Trademark Law, in the context of protecting product packaging.
According to Section 7 of the Italian Intellectual Property Code, it is possible to register – as a trademark – all signs, that can be graphically represented, expressly including emblems, colours and more elaborated representations, such as labels, the product itself and the relevant packaging.
Moreover, according to a correct interpretation of the spirit of the legal provisions protecting trademarks in Italy as a whole (in particular Sections 1 and 12 of the Italian Intellectual Property Code), it is possible for a company to acquire exclusive rights on a sign, simply by using such sign, and independently from any relevant trademark registration (the so called unregistered, or de facto trademark).
In a decision rendered on April 18, 2013 and confirmed on 23 July, 2013, the Civil Court of Turin applied these provisions and granted the brand owner’s request for interim measures - including a seizure, preliminary injunction and publication of the decision - in a look-alike case, in which the packaging of a well-known line of skin-care products and house detergents was imitated. In making its decision, the Court expressly recognised that the packaging and the trade-dress of a product are composed of an overall combination and arrangement of design elements, including graphics, layout, colours and colour combinations that have, or in any case may acquire, significant distinctiveness in the consumer’s mind, due to extensive use of the product – with the relevant peculiar trade-dress -, thus effectively becoming a de facto/unregistered trademark. Defined as such, the packaging and trade-dress of the product are protected, according to Trademark Law and therefore may take advantage of all the tools offered by the Italian Intellectual Property Code, which are more effective – also from a procedural point of view – than those available, if unfair competition rules are applied.
Thus, according to the Court of Turin, trademark protection is available for packaging – even lacking a relevant trademark registration – as long as the elements incorporated in the claim for trademark protection meet the requirements for being considered as a distinctive sign.
Namely, the protected elements may include shapes and colours, or the overall combination of these two, represented on the packaging and/or the product label, so far as they were specifically designed to promote the product and/or may be perceived by the consumers not only as decorative or ornamental items, but as real indicators of the origin of the product in question.
The decisions recently issued by the Court of Turin and, in particular, the reasoning set forth therein, may represent an effective tool for preventing competitors from taking unfair advantage of the investments made by brand owners in developing distinctive packaging that combines the brand’s reputation and its well-known image among the consumers, thus acknowledging that the colour and shape of the label, as well as the packaging itself are elements to which – being the most attractive features – consumers pay significant attention when making choices in a very busy market, offering fast moving customers goods.