The Turin Court rules on packaging imitation

With an order dated January 2023, only recently made public, the Court of Turin granted protection to the packaging of the well-known ZZZQuil product by Procter & Gamble, against that of a competing product pictured below, alongside the original:

Both products are food supplements which promote sleep, in the form of berry-flavoured gummy tablets. P&G, after having launched its product in Italy in 2019, discovered, in 2022, the launch of the product by the competitor (the "defendant") and commenced preliminary injunction proceedings to have its marketing prohibited as a matter of urgency.

In the decision in question, the Court first of all highlighted that the packaging of ZZZQuil "appears to have an original and distinctive character", acquired in particular as a result of the "very intense advertising carried out in Italy, starting from 2019, for a cost of approximately 21 million euros". Specifically, the Court referred to "massive communication campaigns spread simultaneously on different advertising channels",in particular:

- dedicated website;

- social network pages;

- continuous TV commercials;

- use of famous testimonials;

- original initiatives such as the covering of trams in various Italian cities;

- use of repeated slogans, which have become catchphrases, such as 'I just slept better'.

The Court then analysed the packaging of other competing products brought to its attention by the defendant, who argued that ZZZQuil’s packaging was made up of elements that were already widely used on the market and therefore could not be monopolised. The decision instead concludes that the packaging in question are not capable of undermining the distinctive character of ZZZQuil. The following ones, in fact, are considered "completely different":

As for the two most similar packaging reproduced below, the decision states, on the one hand, that the labels are different from the P&G one, and, on the other hand, that "the presence of these products on the market does not appear to make the marketing of the defendant's product lawful, as they could be other violations of the plaintiff's packaging, as reported by the plaintiff at the hearing (which reports having already taken measures to counter them)”.

The Court then goes on to examine the defendant's product, and concludes that it "appears to illicitly imitate the plaintiff's packaging, because it appears to incorporate all its identifying elements", namely:.

- the shape and colour of the jar, all in purple plastic, including the cap;

- the white label with the central purple band with white writing;

- images of flowers and herbs, with a prevalence of green and purple tones and some touches of yellow;

- the image of the gummy tablet, with the number of tablets contained in the jar written on it.

Furthermore, beyond the analytical examination of these elements, the Court states that “What is most striking is the significant similarity between the two jars as a whole, which upon a quick and overall examination appear to belong to the same product line, of the same entrepreneurial origin. This is because at a first overall glance, they appear to have the same chromatic, positioning, graphics features and the same colour of the writing, and to have similar floral images".

The Judge also specified that confusion between the two products cannot be excluded by the presence of the defendant's trademark, "located on the back, almost invisible ”.

In conclusion, the Court found that the use of the defendant's packaging for a product identical to that of P&G constitutes unfair competition pursuant to art. 2598 n. 1 of the Civil Code and can be "framed within the so-called look- alike phenomenon: an illicit practice with which a competitor, to facilitate the sales of its products, imitates the overall external shape, and in particular the colours, of the packaging of better-known products from other companies, without necessarily imitating their brands, thus taking advantage of the familiarity that consumers have with the appearance of a product that is significantly known on the market, obtaining savings in the investments necessary for the launch, or relaunch, of the product " .

In light of this, the Court prohibited the further marketing of the defendant's product, ordering its withdrawal from the market within 40 days and ordering the publication of the ruling of the decision in “Il Corriere della Sera” newspaper and on the defendant's website. It also set penalties of € 250 for each product found on the market after the order was issued, and of € 500 for each day of delay in complying with it. Finally, it ordered the defendant to pay compensation for legal costs, settled at € 9,000 plus an additional 15% for expenses.