The Milan IP Court protects Ports shoes against imitations

On 30 December 2016, the Milan IP Court (Business Court A) issued a preliminary injunction against the marketing of footwear constituting the slavish imitation of shoes with a bow made by Ports 1961 (Ports). Below are the original Ports shoes (to the left) and the imitations (to the right).

In the decision under review, Judge Ms Dal Moro first recalled that, in order to be protected against slavish imitation pursuant to art. 2598 no. 1 Italian Civil Code (ICC), the shape of a product must be individualising and distinctive, i.e. have “capricious” elements distinguishing it from the others and leading consumers to associate it with the company from which it originates. In this case, the Judge considered that this requirement was met: the bow/knot on Ports footwear appears “to have individualising capabilities in respect of the product, since it is an outward and original characteristic, not conditioned by its function, and therefore destined to have a distinctive capacity“, hence the consumer associate it with Ports. Confirmation of such distinctiveness, continued the Judge, is also given by the success of the shape on the market and by the numerous attempts at imitation.

Second, the order pointed out, the protection against slavish imitation requires that the imitative product is able to create confusion in the market, i.e. to mislead consumers about its origin from one company rather than another. In this respect the Judge found that the imitative product “reproduces substantially the same individualising element of the Ports product (…). Possible differences in mere details do not affect the general impression that it produces on the average consumer who, of course, cannot discern which the original product is and which the imitative one is.”

In light of the foregoing, the Court therefore found for unfair competition for slavish imitation of the Ports product, albeit within the limits of the summary assessment of preliminary proceedings.

The order did not instead grant Ports’ claim that marketing the imitations would also constitute unfair competition for the appropriation of Ports’ quality and repute under art. 2598 no. 2 ICC. This offence, the Judge said, is not in fact committed by the reproduction of another’s product, but instead “it occurs when an entrepreneur, in advertising or equivalent forms, attaches to their products or business qualities not possessed by them, but by the products or company of a competitor, in order to disturb the free choice of consumers.”

Moving on to the examination of the “risk in delay” required for issuing the interim injunction requested by Ports, the Court affirmed that this was also met, considering in particular the danger of customer diversion and confusion among the public, which cause damages difficult to reverse and to compensate. The Judge also stated that the risk was particularly serious because of the speed of propagation of the confusing effect amongst the customers, “considering the medium used for the sale of the imitating products, promoted and marketed (at least also) through the Internet network: precisely this type of marketing, which implies a publication with high potential for the dissemination of images of the unlawfully imitative shapes, is likely to jeopardise the distinctive capabilities of the original product.”

In light of the foregoing, the order enjoined any further marketing of the imitative shoes, fixing a penalty of € 250 for each violation of the order and of € 1,000 for each day of delay in its execution, and ordered the counterparty to pay Ports’ legal fees, fixed at slightly under € 10,000.