The Milan IP Court on the infringement of a patent relating to jeans, the dealer’s responsibility and compensation of damages

(An Italian version is published also on Diritto 24 – Il Sole 24 Ore)

With sentence no. 472 of 14 January 2016, the IP Court of Milan (Judges Mr Marangoni, Mrs Dal Moro and Mrs Giani) granted patent protection to a particular pair of jeans that can “enhance and shape the forms of the wearers, with particular reference to the gluteus area”, and ordered the defendants to return the profits derived from the sale of infringing goods.

The parties in the dispute were the plaintiff Max Mara Srl and the defendants Germani Group Srl and Il Passatempo SpA. Max Mara stated that a model of jeans produced by Germani Group and re-sold by Il Passatempo infringed its Italian patent on “a pocket for clothing, a method for manufacturing the pocket and the relevant garment”, on which patent the plaintiff’s model of jeans named “Perfect Fit” was based.

The Judges, in agreement with the conclusions of the expert witness, first ascertained the validity of the patent, rejecting the defendants’ exception of lack of the patentability requirements. As regards in particular the inventive step requirement, the judgment noted that “since the back pocket of close-fitting pants – as a pair of jeans (even if elastic) – fails to fit the curved surface of the gluteus, and tends to flatten the gluteus with an aesthetic effect that can be unpleasant, it has to be concluded (in line with the expert witness) that the reduction of the aforementioned flattening, the increase in comfort and the pleasantness of the aesthetic effect constitutes a very clear technical problem: to create a three-dimensional pocket that well adapts to the body, is comfortable to carry and is aesthetically pleasing.” Having identified the technical problem, the judgment states that “the method for manufacturing the three-dimensional pocket designed by Max Mara based on the patent’s claims constitutes an appropriate technical solution for that problem. This technical solution involves an inventive step, since for a person in the art it was not evident from the state of the art.”

The Judges then went on to evaluate and finally ascertained the infringement of the patent by the defendants’ product, noting in addition that “the marketing of the trousers by Gruppo Germani amounts, in addition to patent infringement, to unfair competition under art. 2598 (3) Civil Code, as the commission of acts of infringement does not comply with fair business practices.” Furthermore, with reference to the resale by Il Passatempo, the Judges excluded the notion that it could go free from liability for allegedly not having been aware of the infringing nature of the product purchased from the Germani Group: “The sale of infringing goods amounts, presumptively, at least to infringement for fault unless proven otherwise: indeed the intellectual property rights are subject to a system of publicity, and, therefore, to a presumption of knowledge on the part of the economic operators; and in this case not only did Il Passatempo not prove that it was faultlessly unaware of the infringement, but also, at least as of 23.7.2012 (date of notification of the summons), it was certainly aware of selling a product which Max Mara alleged to be infringing, and continued in the illicit act.”

As regards the assessment of damages, the judgment noted that Max Mara had not provided any evidence of the alleged damages and loss of profits. Nevertheless, the Judges pointed out, the plaintiff had asked, pursuant to art. 125 IP Code, for the restitution of the profits earned by the defendants through the marketing of the infringing products, and this claim was granted “also with regard to Il Passatempo that – even if it was not faulty as it alleged – it would still be obliged to do so.” In this latter regard, the judgment in fact stated that “the unaware infringement does not give rise to damages but cannot however enrich the author of the same, which will have to return the profits.”

The decision therefore enjoined the defendants from further manufacturing and marketing the products at issue under penalty of € 50 for each subsequent infringement, ordered the withdrawal of the disputed goods under penalty of € 1,000 for each day of delay, sentenced the defendants to pay damages and legal fees, and ordered the publication of the decision on Il Corriere della Sera in double the standard font size.