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October 1, 2015 Vol. 70 No. 17 Back to Bulletin Main Page

ITALY: Disclaimers Do Not Prevent the Crime of Counterfeiting

In judgment No. 24516/2015, issued May 22–June 5, 2015, the Italian Supreme Court confirmed its position vis-à-vis disclaimers affixed on counterfeit goods, such as the wording “falso d’autore” (in English, “author’s fake”).
The case at issue originated with a trademark dispute between a well-known beauty products company and the defendant, a retailer who had put up for sale many counterfeited packages of perfumes bearing the disclaimer “falso d’autore.”

The Court affirmed that registered trademarks are afforded special protection. As such, counterfeiting is not minimized by expressions informing the consumers that the products are not originals, because the reproduction of a third party’s trademark without authorization constitutes a crime.

In particular, the Court pointed out that the risk of confusion that lawmakers seek to prevent by criminalizing counterfeiting is not that between the actual goods, but that between the trademarks. Consequently, every time a registered trademark is reproduced, whether blatantly or with very minor differences which do not alter its distinctive character, the individual responsible for such reproduction commits the crime of counterfeiting, irrespective of a disclaimer.

The Court further took the view that, in the case at hand, the deceptive nature of the use of the trademarks could not be dismissed, even considering the defendant’s claim that the trademarks affixed on the perfumes were used descriptively, in order to enable the consumers to identify the different scents and fragrances.

Notably, the Court stressed that this defense may be invoked only when the actual use of others’ trademarks makes it absolutely evident that such trademarks are used only for descriptive purposes.
This means that it must be unequivocally clear for the consumers that they are currently facing products different than the ones of the trademark owner. If the packaging prominently bears the name, logo and characteristics of the famous trademark, the deceptiveness of the use cannot be alleviated by a generic disclaimer, which, in this case, was displayed in such small characters that it could easily go unnoticed.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association