|Roman Holiday Vespa|
More specifically, it its judgment on 17 March 2017 (sentenza No 13078/2017) the Fifth Section of the Supreme Court addressed the question whether the mere reproduction of the image of a Vespa [a well-known and iconic symbol of 'italianità', ie 'Italian-ness' and - more generally - Italian life-style] on gadgets (eg key rings) and T-shirts without also the reproduction of the word 'Vespa' [a registered trade mark] would amount to counterfeiting.
Under Italian law counterfeiting is not just a matter of trade mark infringement [in this case, it would be trade marks held by Piaggio, which also produces quite a lot of Vespa-related merchandise] but also a conduct that is subject to criminal sanctions.
The Rome Court of First Instance (Tribunale) had already found against the defendant, who appealed the decision before the Supreme Court and argued that his conduct would not fall within the scope of Article 474 of the Italian Criminal Code. This provisions states [translation by myself]:
3. The delicts sub paragraphs 1 and 2 are punishable upon condition that internal laws, EU regulations and international conventions on the protection of intellectual and industrial property are observed."
|Kat Holiday Vespa|
The Supreme Court rejected the defendant's argument.
Recalling an earlier Supreme Court decision (sentenza No 9362/2015), the court noted that even the mere reproduction of an image can fall within the scope of Article 474 as long as: (1) such image is a trade mark or a distinctive sign of the product; and (2) the reproduction has the potential to create in some way confusion among consumers as regards the origin of the good in question.
It follows that the material reproduction of a trade mark as such is not required for Article 474 to apply.
This decision is consistent with earlier Italian case law on this point.
Even if the Supreme Court did not refer to decisions other than Italian ones, the ruling also appear consistent with relevant trade mark case law, including the seminal decision of the Court of Justice of the European Union (CJEU) in Adidas-Salomon, C-408/01. In the case the CJEU considered use of a sign as embellishment [this appears to have been to some extent the defensive line used in the case decided by the Supreme Court], and held that the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to trade mark protection where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark.