The famous Italian luxury brand Ferragamo has recently won a case before the Court of Milan (judgement no. 7940/2017) concerning counterfeiting of its signature metallic-plate-ribbon applied at the tip of the “Vara” shoes, as shown in the image below.
The Florentine maison was taken to Court by two Chinese footwear shops owners located in Milan’s Chinatown; they requested a declaration of non-infringement for their products represented below.
Ferragamo had sent notice letters to the two shop owners requesting they ceased marketing and sales of the counterfeit shoes in question and invoking their two EU trademarks for the plate and the ribbon respectively.
The two retailers defended their position by taking action arguing that their shoes presented different trademarks and that the public could not be confused, also bearing in mind the price they applied was more than ten times lower than the price of the Ferragamo shoes. They also alleged unfair competition. Ferragamo counterclaimed based on trademark infringement and unfair competition.
In its decision the Court of Milan stated that the existence of the ribbon and plate trademarks did not imply that one company can own a monopoly on any ribbon or any plate that can be applied on the tip of a shoe. Earlier trademarks can prevent later third parties from using confusingly similar marks, or marks that can amount to unfair exploitation or jeopardise their distinctive character of the former right holder.
The Court of Milan considered that the two offending shoe models amounted to a slavish imitation of the Ferragamo trademarks. In particular, the Court underlined that the actual risk of confusion between the products and the concrete ways in which a sign is used should not be taken into account, as the infringement action focuses on intangible property and it protects the absolute right to use the mark as an autonomous asset. In other words, infringement occurs regardless of an actual risk of confusion between a trademark and the specific contested goods, but account should be taken of the fact that they both belong to an identical category of goods, namely shoes.
In addition, the relevant confusion is not only in the mind of the purchaser, but it also comprises the so called ‘post-sales’ confusion, occurring in the mind of third parties who happen to be confronted with the counterfeit purchased products. These third parties can make an association between the original and the infringing products too.
The marginal differences in the shoes, the fact that the original plaques include the word Ferragamo and the counterfeits include other words and the – rather substantial – difference in prices were not relevant.
On a rather sociological note, the Court of Milan highlighted that often those who purchase luxury items are driven by the will to flaunt, or to show that they own an elite product or a status symbol. Thus, not only the qualitative differences and the different prices do not rule out the risk of confusion, but additionally they amount to misappropriation of attributes.
Finally, the Chinese retailers were ordered to pay Ferragamo damages for disparagement of its trademarks and loss of profits.
It is worth noting that, within a few days of the decision of the Court of Milan, the Criminal Section of the Italian Supreme Court (judgement no. 38382/2017) also stated that the mere fact that some products are rough imitations of famous branded products (in this case Gucci, Dolce & Gabbana, Louis Vuitton and Christian Dior leather goods) does not rule out per sé the crime of infringement. In fact, the relevant Criminal Code provision is intended to protect not only the final consumer but rather the overall wider ‘public faith’ – intended as the legitimate expectations of the public towards the system of trademark protection.
Hence, those who commercialize rough counterfeit products should be aware that they risk incurring both in civil liability for damages and in criminal liability even though their products would not entail a confusion with the original ones in the mind of the end user.