1. An Italian First Instance Court in Milan (Corporate and IP Section) was recently called to solve a dispute arisen between manufacturers of accessories for tiny dogs.
Both firms were active in manufacturing and selling trendy and stylish clothing and luxury accessories for pet dogs targeting with their products high end customers. Both also used a little mouse as a distinctive sign on their products.
2. The plaintiff approached the Court filing claims for acts of unfair competition (copycat and disparaging competition, for using almost identical product denominations and for making denigrating statements about a competitor on social media), IP infringements on distinctive signs and trademarks as well as for damage compensation.
3. While the Court extensively dwelled into the factual premises of the dispute (finding most of the plaintiff's claims as grounded, so decision no. 2533 o March 1, 2017), fans of IP legal issues are likely to find interesting the section of the judgement dealing with the defendant's infringement on the 'distinctiveness' of plaintiff's products.
On this aspect, the Court reminded that to ascertain likelihood of confusion on consumers' side it was necessary to assess products' distinctive capacity and their specifically identifying characteristics.
In the Court's view, such capacity and characteristics could well be deduced – as in the case submitted to its evaluation – by a peculiar, unique and 'luxurious' style, characterized using peculiar colors and their combinations as well as of decorative or ornamental elements, such as: bows or ribbons, laces, embroidery, glitter and bangles. This even more, if such style had been flagged to the market through articles published in newspapers and magazines.
4. In addition the Court found the defendant's conduct unacceptable where:
- the denominations and distinctive signs (a little mouse) used for the products resulted almost identical to those of the plaintiff,
- information and comments made on social media about the plaintiff's products and business activities resulted denigrating to the latter.
5. Based on such findings, the Court:
- issued a cease and desist order against the defendant as to any further production, promotion, sale and distribution on the market of the infringing items and with respect to the use of the little mouse as a distinctive sign on the products,
- ordered the defendant also to withdraw any infringing products from the market,
- awarded the defendant with damage compensation (Euro 30.000),
- served the latter also with the legal fees of the dispute.
6. The take away from this case: 'distinctive character' has not necessarily to rely on something 'new' or completely 'original'. Just using or combining in a way elements commonly in use in a business sector may result sufficient to achieve a specifically identifying status of a certain product. Therefore, marketers need to be careful when relying on the 'commonly in use' standard.
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