On 15 January 2010, the IP Chamber of the District Court of Milan issued a key decision, upholding G-Star’s claims for unfair competition in relation to G-Star’s ‘Elwood’ jeans model and finding infringement of registered Community Design of the ‘Limit Regular’ jeans model.

Background
While the case brings to mind the Benetton/G- Star decision (ECJ C-371/06, in a case reference received from the Netherlands) which also related to the stitching and kneepads on the Elwood jeans, in Italy G-Star could not rely on any shape trade marks nor, for that matter, designs, for the Elwood jeans.

G-Star requested that the Court hold the defendants, trading under the Kruder trade mark, liable for unfair competition and for slavish imitation of the famous Elwood jeans as well as for parasitic activity based on the copying of a high number of G-Star items. In addition, G-Star also claimed infringement of its registered and unregistered community designs.

The Italian importer and retailer argued that the Elwood jeans did not have original character and that the addition of the defendants’ trade mark on the copycat jeans was in any event sufficient to avoid consumer confusion. The defendants further challenged the validity of G-Star registered - as well as unregistered - Community Designs.

The Milan Court held that the ‘Elwood’ model possessed the relevant, individualising characteristics such as the knee pieces, in addition to the stitching, and has original character. The Milan Court therefore made a finding of unfair competition for the slavish imitation of the distinctive shapes of the Elwood jeans but dismissed the claim for parasitic behaviour as well as unregistered designs infringement with reference to the other clothing, which, in the view of the Court lacked original features. In addition, the Court found that there was infringement in relation to the registered Community Design rights for the ‘Limit Regular’ jeans range.

This landmark decision condemns the copying of a fashion product, in particular the Elwood jeans, even though there are no registered trade marks or designs upon which to rely on. It recognizes that an act of unfair competition may result from imitation of an article of clothing, having original characteristics, and that such original characteristics may be found not only in haute couture products, but also in an item which is as simple as a pair of jeans.

In addition, with regard to the assessment of the compensation for damages, this case is of particular significance as, in its ruling, the Court adopted precise criteria for calculating damages, based on the infringer’s profits and G-Star was awarded damages in the region of approximately Euro 120,000. The Court also issued an injunction against further acts of infringement as well as a penalty of Euro 100 for each and every case of further infringement found on the market place and also ordered the publication of order in the mainstream Italian daily newspaper “Il Corriere della Sera” at the expense of the defendants. The defendant was further ordered to pay the costs of the proceedings.