The Venice Court of Appeal protects Stroili Oro Jewellery against counterfeiting and acts of unfair competition
With judgment of 2 April 2021, the Venice Court of Appeal upheld the claims of the well-known jewellery manufacturing company Stroili Oro against counterfeiting acts, parasitic competition and slavish imitation of the companies DUO DE LI TRADIND DI LIN JIANHUA, WENPING WANG and HAIDONG CHEN. In fact, the latter had imported and marketed products in Italy similar to those of Stroili Oro’s “Chic Embrace” collection. In particular, this collection concerned jewellery comprised of concentric circles or ovals, protected by a registered design of which Stroili Oro is the exclusive licensee.
Some examples of the products protected
Stroili Oro had filed a motion for an ante causam search and seizure order that was granted by the IP Court of Venice. However, at the outcome of the subsequent proceedings on the merits, the IP Court of Venice had denied the infringement of the registered design and it only had ascertained the unfair competition of the defendants pursuant to Article 2598 (2) (3) of the Civil Code (c.c.), given the activities of «confusing and parasitic imitation regarding the jewellery collection “Chic Embrace” of the plaintiff». Therefore, the IP Court had revoked the precautionary search and seizure since they were sought and granted based only on the provisions protecting the registered design and not relating to the unfair competition; in addition, the IP Court had dismissed Stroili Oro’s damages claim since it was grounded on the special criteria of liquidating damages set out for a registered design infringement by Article 125 of the IP Code (in particular the criteria of the return of the infringer’s profits) and not for the unfair competition. In fact, the IP Court noted, the different general rules set out in Articles 1223 and 1226 c.c., which do not expressly include the criteria of the return of the infringer’s profits, should apply with regards to the unfair competition. These rules require evidence of a causal link between the illicit behaviour and the damages suffered, which Stroili Oro did not provide in the case at issue. For the same reason, the IP Court had rejected the claim for the publication of the judgement.
Stroili Oro therefore brought an appeal before the Venice Court of Appeal. Preliminarily, the latter ascertained the infringement of the registered design at issue: according to the Court of Appeal, in fact, the Court of first instance had erroneously compared the original product and the imitation product rather than the registered design and the imitation product, which is instead required under art. 41 of the IP Code. In fact, according to the Cout of Appeal, this provision «protects the registered design corresponding to its depiction in the drawing or in the photograph and to the relevant description attached to the registration application». The Court of Appeal concluded that, by comparing the registered design and the defendants’ product, there were no significative differences that might give a different overall impression to the informed user; hence the declaration of infringement.
Having declared the infringement of the registered design at issue, the Court of Appeal assessed the damages claim based on the criteria set out in Article 125 of the IP Code. In this respect, it found that once the infringement has been ascertained «it should be acknowledged that the amount of compensation must be calculated based on all criteria provided by Article 125 of the IP Code, including the return of the infringer’s profits, as an alternative to compensation for the loss of profits or to the extent that they exceed that compensation». Therefore, the Court of Appeal upheld the damages claim based on the return of the infringer’s profits, which does not require any assessment on the causal link on potential losses incurred by Stroili Oro.
Finally, the Court of Appeal accepted the claim for the publication of the judgement pursuant to Article 2600 c.c., highlighting that this constitutes a discretionary measure «that is not aimed at compensating damages, but it has the character of an autonomous sanction aimed at informing the public about the restoration of the infringed right, in order to rebuild the image of the right holder».
In light of the foregoing, the Court of Appeal reversed the IP Court’s decision by ascertaining the defendants’ infringement of the registered models of which Stroili Oro is the exclusive licensee and the acts of unfair competition against the latter. As a consequence, the Court of Appeal: i) confirmed the ante causam search and seizure order; ii) enjoined the defendants from manufacturing and marketing the infringing jewellery; iii) ordered the defendants to pay damages pursuant to Article 125 of the IP Code; iv) ordered the defendants to publish the judgement on the online magazine “PAMBIANCO”, in the newspaper “IL SOLE 24 ORE” and in the magazine “VANITY FAIR”.