In July the Specialized IP Division of the Court of Milan decided on a claim filed by the high fashion house Fendi against Zara, a famous clothing chain now widespread all over the world.

The plaintiff complained that Zara had unlawfully used two of the images of the previous years’ Fendi fashion show, portraying a model in a red dress and representing the symbol of the Spring/Summer collection 2014. These photographs were used and reproduced in the form of drawings on some tank tops that were part of Zara’s latest collection, subsequently distributed and sold in all the stores and in the online shop of the defendant.

The Judge of Milan recognized the existence of conditions for granting the injunction in favour of Fendi, finding that the graphic representation of Fendi’s photographs and their commercial exploitation by Zara constituted unlawful competition and copyright infringement of the pictures owned by Fendi.

The Judge first observed that the drawings used by Zara clearly reproduced all the elements of Fendi’s photos, which were widely published online and in several magazines and easily attributable to the image of the fashion house. For this reason, the graphic representation of the pictures, according to the judge, amounts to unfair competition due to misappropriation of attributes by the competitor under art. 2598(2) of the Italian Civil Code, a behaviour that has the purpose of “hooking-up” a party’s own product to that of their most renowned competitor. In Zara’s behaviour, the Judge also observed misleading conduct, specifically generated by “post-sale confusion”, that is the kind of confusion occurring when a person, who has not bought the product, sees the counterfeit product in the hands of other people who have purchased it. This modern concept of parasitical exploitation arises from the undeserved appropriation of the “message” associated to a particular brand, a concept that is not actually an alternative to the traditional concept of likelihood of confusion, but is rather a specification of it.

Regarding the copyright infringement, assuming Fendi’s ownership of the photographs – based on the presumption of ownership accorded to the possessor of the work (the defendant had opposed a lack of evidence about the ownership), the elaboration of the pictures in the form of drawings and their commercial exploitation by Zara constitutes, according to the Judge, an infringement of the rights to the image owned exclusively by Fendi.

In the light of the above mentioned considerations, the Court of Milan prohibited Zara from producing and selling, in any form, the garments reproducing the infringing images, and authorized the seizure of the garments already on the market.

It is not clear at the time of writing whether or not the order has been claimed.

Silvia Laitila