Assessment of post-sale confusion about renowned trade marks

In providing a judgement on the counterfeiting character of a trademark, account must be taken not only of the “direct” confusability arising when purchasing the counterfeit product, but also of the subsequent confusability realized when actually using the goods. (so-called post sale confusion).

This was reiterated by the Court of Milan, and more specifically by the section specialized in business matters, through a recent ruling of 13 July 2017, in the case brought by two Chinese traders against the famous fashion company Salvatore Ferragamo concerning the alleged counterfeiting by the plaintiffs of a renowned three-dimensional European trade mark owned by the Florentine fashion house reproduced on the buckles of two models of footwear marketed by them.

In support of their opinion, the two traders had inferred that the disputed footwear in fact showed different trademarks and were sold at a price that was significantly lower than the one charged by the defendant company, thus circumstances that would have excluded the existence of counterfeiting.

The Milanese Judge, called upon to settle the dispute, first of all reiterated that the counterfeiting action has a real nature and protects the absolute right of the holder to the exclusive use of the sign, and that therefore the assessment of counterfeiting is independent from the actual confusability of the products and the methods whereby the sign is used, on the contrary, it must be assessed by reference to the identity of the products.

Furthermore, it added that in assessing whether a trade mark has been counterfeited it is also necessary to assess the existence of “post-sale confusion”, that is the confusability “caused to third parties when they see the product reproducing the imitated trade mark being used or worn by the purchaser, and who therefore associate the latter to their memory of the imitated trade mark, necessarily restricted to the overall and essential impression of the same”.

Post-sale confusion is greater in the sector of luxury goods which consumers are often pushed to purchase for the purpose of showing off.

In this particular sector, where there is a greater risk of coupling by the competitors of owners of famous trademarks, the qualitative difference between the products, the price difference and the different customer target do not eliminate the risk of confusability “but further connote the offence also in terms of parasitic acquisition of the merits of the renowned trade mark “.

Having said that, the Judge awarded the trademarks of the Florentine fashion house the status of renown trademarks, protected as such regardless of the existence of any risk of confusion for the public, but simply because of a prejudice caused to the distinguishing ability or reputation of a trade mark, or an undue exploitation of the same, i.e. two conditions that occurred in the case at hand.

Lisa Crociani

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