On 21 February 2011 (decision No 6254/11) the Italian Supreme Court issued a decision reinforcing the protection for design goods under the Italian criminal law, with a finding that the provision prohibiting the sale of products bearing misleading signs can also be applied to the sale of fake design products regardless of the fact the infringing product actually bears a trade mark. As a consequence, the mere placing on the market of non-original designs, even without trade marks, can now be more easily considered a criminal offence in Italy.

Background

The case relates to the application of Article 517 Italian Criminal Code that forbids the sale of industrial products under false signs that could mislead buyers as to the origin, provenance or quality of the product.

The imprisonment term foreseen for the sale of products under false distinctive signs is 2 years. This criminal offence is further also punishable with a maximum fine of Euro 20,000.

The above provision  - contained in the section on “offences against industry and commerce” -  establishes a subsidiary criminal offence, while Articles 473-474 of the Italian Criminal Code (contained in the section on “offences against public trust”) specifically refer to infringement of registered rights only, foreseeing penalty fines up to Euro 35,000 and imprisonment terms of maximum 4 years for the infringement of registered (trade marks, design and patent) rights.

It is settled case law that Article 517 also applies in the event of a risk of deception for the consumer so that it is not required that the purchaser is actually misled. Indeed, previous Supreme Court decisions established that the provision aims at protecting the general interest of the economic order and not the consumers or other manufacturers.

However, in the event of design goods, previously the Supreme Court and part of the lower case law held that Article 517 Criminal Code is not applicable to the product as such but to the product bearing a counterfeit sign.

In the case at hand, it concerned counterfeits of interior design goods created by Franck Evennou and Leon Gallichian, some of which did not bear the designers’ trade mark.

On 5 October 2009 (decision No 7192/2009) the Rome Appeal Court dismissed the appeal of the defendants, who had been held punishable under Article 517 Criminal Code by the Rome first instance Court even with reference to products not bearing a trade mark.

Both defendants appealed to the Supreme Court.

The Decision

The Italian Supreme Court held that design goods, even if produced in series, are characterized by certain aesthetic features or by particular manufacturing methods and that the close link between strictly industrial aspects and the author’s artistic sense makes that such products are original and recognisable to consumers, so as to constitute their distinctive signature.

In conclusion, the Supreme Court overruled its prior case law and confirmed that the above provision may also be applied to fake design products whether or not these products actually bear a trade mark.

PS In the present case, the defendants could also be held liable under Article 171 of the Italian Copyright Law, providing criminal sanctions for the wilfully reproduction, without the consent of the right holder, of a copyrighted work. The claimants did however not invoke this provision.