The Milan IP Court orders the seizure of counterfeit Converse shoes

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

On 24 June the IP Court of Milan ordered, by way of urgency, the seizure of counterfeit footwear sold by an Italian company under the trademark “Converse All Star”.

Converse (the claimant) had in fact discovered that the Italian company (the respondent) marketed shoes whose serial numbers did not correspond to any production batch on their database, and whose prices were significantly lower than those of the originals. Hence the precautionary action commenced by Converse, which requested the Court to order a search of the respondent’s accounting documents, the seizure of the infringing goods, the discovery of the persons involved in the production and sale of the counterfeit products and the injunction of the defendant’s illegal conduct, further than the establishment of a penalty and the publication of the order.

The respondent defended itself in court claiming that they had repeatedly requested the supply of original products from the claimant, but had never got any feedback. They had therefore bought the footwear in good faith from some wholesalers that had expressly guaranteed the originality of the products.

The Judge handling the case started by highlighting that “it is undisputed that the respondent offers for sale either through Internet or through a network of traditional shops footwear bearing the Converse All Star brand that are perfectly identical to those of the claimant“. In this situation, whilst Converse had provided evidence of the infringement, the respondent had not been able to prove “the alleged originality of its products, documenting the legitimate purchase from subjects being part of the distribution chain of the trademark holder“. Hence, the conclusion that “there is sufficient evidence of the violation of Article 20(1)(a) IP Code“, i.e. of trademark infringement, “given the ascertained identity between the distinctive sign and products – footwear – on which it is affixed“.

The Judge also confirmed the existence of the danger in delay, and thus the urgency to provide a precautionary measure, as “there is documentary evidence of the actual availability by the defendant of several hundred counterfeit shoes bearing the Converse All Star trademark“; in addition, “the offer for sale is still current on both distribution channels – Internet and traditional – and often carried out at significantly lower prices compared to the price of the original Converse shoes, which results in real danger of irreversible confusion among the public and irreparable degradation and dilution of the value of the enforced trademark“.

In conclusion, the Judge granted the requested seizure and enjoined the respondent from any commercialisation, offer for sale and advertising by any means and methods of the footwear in question, establishing a penalty of € 100.00 for each violation of the order. The Judge instead rejected the other requests aimed at the search of the accounting records and the discovery of the persons involved in the production and sale of counterfeit products, given “the spontaneous submission of the documents of origin of the goods by the respondent, and considering that more insightful inspections, where and if necessary, shall be reserved for the merits proceedings”.