INFRINGEMENT OF MICROSOFT TRADEMARKS ON COA (CERTIFICATES OF AUTHENTICITY) SOLD SEPARATELY FROM HARDWARE
Italian court holds that it is unlawful to commercialize COAs (Certificates of Authenticity) which have been sold or purchased separately from the software they refer to and which without authorization reproduce the distinctive signs exclusively owned by Microsoft.
With decision dated 1 December 2016 the Court of Naples (Intellectual Property Division) granted Microsoft an ex parte order to be enforced against a Naples-based reseller of software products. The order required that products bearing signs infringing the “Microsoft” and “Windows” registered trademarks, and accompanying logos, should no longer be produced, imported, exported, distributed, offered for sale, commercialized, including via the Internet. The order also imposed a € 250,00 fine for each violation ascertained after the issuing of the order and a € 500,00 fine for each day of delay for failing to execute the order itself. Finally, the order obligated the party to withdraw from commerce all samples of the infringing products.
The Court, who also considered extracts of web pages named after and/or referring to the defendant, held that it had been proven that the defendant produced and/or commercialized and/or offered products, in particular COAs (Certificates of Authenticity) – which are fixed on the computers on which original Microsoft software has been installed – which could not be sold or purchased separately from the software product they refer to. The Court also found that unlawful use had been made of stickers related to Microsoft programs, in that they bore signs that infringed the Microsoft trademarks, a behavior that was judged consistent with the intention of illegally copying the software.
On 15 December 2016 the Court of Naples confirmed the aforesaid order, and also compelled the defendant to proceed with publication of the order on the Internet page of the defendant.