Criminal Protection of Registered Designs
Dott. Antonio Zenti describes a recent case relating to the criminal protection of registered designs for a clothing and footwear company. For reasons of sensitivity, the client's name has been omitted.
Case summary
Question:
Criminal protection of the exclusivity of industrial property titles is contained both in the Italian Criminal Code and in the sector-specific legislation, namely the Industrial Property Code (CPI, Art. 127).
In particular, the counterfeiting of designs constitutes a criminal offence under specific crimes against public faith pursuant to Arts. 473 et seq. of the Italian Criminal Code, while within Title VIII, Chapter II, the legislature has provided for various offences including the manufacture and trade of goods produced by appropriating another's industrial property title (Art. 517-ter of the Criminal Code). Criminal penalties, including imprisonment and/or fines, apply when the offence is committed by the counterfeiter for profit, i.e. with the aim of obtaining any type of advantage, even if not purely economic.
Advisory services provided:
At the beginning of 2017, a well-known Italian clothing and footwear company, with more than 1,000 single-brand stores and thousands of multi-brand points of sale, present in more than 100 countries worldwide, urgently requested assistance from our firm to protect its industrial property rights.
The clothing and footwear company, through some of its staff, had identified at an exhibitor stand at a well-known international trade fair some products considered to infringe the scope of protection of one of its registered Community designs.
On the basis of photographs taken at the stand, BIESSE prepared a technical–legal opinion confirming the interference between the registered Community design in question and the contested products displayed at the fair.
The opinion drafted by BIESSE was then attached to the legal documentation produced by the clothing company's lawyers, reporting the counterfeiting to the Guardia di Finanza (Financial Police), specifically to the territorially competent Command.
BIESSE also participated, for the relevant part, in presenting the facts before the Guardia di Finanza Command, which, after the necessary assessments, sent officers to proceed with the seizure at the fair of the contested products.
Since the fair lasted only a few days, and a preliminary verification of the display of the contested products at the same fair was unavoidable, the entire process was extremely tight.
The request for advice was received in the early afternoon, while early the following morning, with the technical-legal opinion prepared, BIESSE was at the Guardia di Finanza Command, which was located outside the Province of Brescia and indeed outside the Lombardy region.
