A “BOW” OF TENDENCY. THE COURT OF MILAN IS CALLED ON TO DECIDE PROTECTION.
The Court of Milan, with order dated 22 April 2016, granted the precautionary protective measures requested by the Italian branch of the Ports Group, a company that operates worldwide in the field of clothing and fashion accessories. The measures were directed against the Spanish company Fashion Retail S.A. as well as the Italian corporation Stradivarius Italia S.r.l. for marketing in their stores and on the website stradivarius.com a particular shoe characterized by a “bow/knot on the upper shoe” identical to the one created and marketed by Ports Italy.
The applicant had based this precautionary action on certain acts of unfair competition allegedly carried out by the counterparties – that is, slavish imitation and misappropriation of attributes – requesting the opposing party to be inhibited from the continuation of the illegal conducts. Specifically, Ports Italy claimed that its shoes were characterized by the particular shape of a “bow/knot on the upper shoe”, so peculiar to allow the average consumer to connect such a shape (exclusively) to the applicant’s production. Moreover, given the reputation acquired on the market by the shoes with “bow/knot on the upper” after only 4 months from their entry into the market, the defendants would have slavishly imitated the characterizing form just in order to exploit the reputation of the applicant appropriating the advantages related to its production.
The Court held that the peculiar form of the shoes with a “bow/knot on the upper” was indeed a characterizing element of the applicant’s production, considering it to have that unique quality established by Article 2598, no. 1, of the Civil Code. Moreover, given the substantial identity between the products of the two companies, the confusing effect that the rule in question aims to avoid would have certainly taken place. However, according to the Court, the misappropriation of attributes under Article 2598, no. 2, of the Civil Code did not occur, since the reproduction of the most peculiar elements of the other party’s products would lead the consumer into error as to the origin of the goods, and hence would not be intended to take possession of the strengths of others, as required by the rule at issue.