SUPREME COURT, DECISION OF 21 FEBRUARY 2011, NO. 6254/11

The Italian Supreme Court issued a decision enhancing the protection for design products under Italian criminal law.

The dispute concerned the sale of counterfeit design furniture, which bore the fake signature of the designers, Franck Evennou and Leon Gallichian. The design goods were presented to the public as originals; the sale was published in various Italian designs newspapers.

Article 517 Italian Criminal Code prohibits the sale of products “under false signs that could mislead purchasers as to the origin”. A person selling products bearing misleading signs is punishable with imprisonment up to a maximum of 2 years, and a fine of maximum € 20,000.

The provision is generally applied to infringements of registered trademark or design rights.

However, although in the case of issue the designs were neither registered nor did they bear a registered trademark but only the fake signature of the designers, the First Instance Court of Rome and the Court of Appeal of Rome found that the sale of the counterfeit furniture amounted to a criminal offence under Article 517 Criminal Code.

The Italian Supreme Court confirmed that, although Franck Evennou's and Leon Gallichian's designs were not registered, Article 517 was applicable. Article 517 Criminal Code, was, in general, aimed at protecting the fair economic trade of the market. It prohibits the sale of counterfeit products to avoid confusion on the market and harm for the economic trade.

The court added that design products were characterized by their specific aesthetic features and/or by their particular manufacturing process. Consumers bought design products in light of such features or the manufacturing process. They would not pay specific attention if these products had a trademark affixed or if the products were registered as design.

With regard to the design furniture at issue, the court held that "the design products are characterized by a strong link between strictly industrial aspects and the author’s artistic creativity, making the products original and recognizable for the consumers, and thus constituting their distinctive nature."

The court concluded that the sale of the counterfeit design furniture might cause confusion and mislead consumers as to the origin of the goods and, therefore, needs to be punished according to Article 517 of the Italian Criminal Code.

The decision of the Italian Supreme Court is particularly interesting as it enables treating the mere placing on the market of counterfeit designs - with or without a trademark or registered design - as a criminal offence.

It appears that Italian judges are now more likely to consider misleading conducts as offences punishable under Italian criminal law.