The protection of a shape mark: the “Le Pliage” case

The Milan court recently issued award no. 10280/2021 relating to the protection of three-dimensional marks corresponding to the shape of the well-known “Le Pliage” bags.

The judgment follows preliminary proceedings initiated by the holder and licensee of the trademark rights against a company that marketed similar bags. Below is a comparison of Plaintiff’s mark on one side and Defendant’s bag on the other.

Defendant’s bag of the brand “Le Pliage”

During the preliminary proceedings, the parties apparently settled the dispute before the judge. On that occasion, the defendant recognized the exclusive rights of the applicants to the mark in question and undertook to cease the marketing of its bags, to destroy those in its warehouse and to continue negotiations for damages. However, the defendant subsequently continued to market the bags and abandoned negotiations over damages.

According to the rights holders, the first model of “Le Pliage” bags dates from 1993 and has since been widely marketed internationally and has been the subject of significant advertising investment, with more than 54 million pieces sold in the world. All of this demonstrates the distinctive character and reputation of the relevant three-dimensional mark. Furthermore, the unique design of the bags would benefit from protection according to Art. 2(1)(10) of Italian copyright law, as it would meet the necessary requirements of creative character and artistic value.

At the end of the ordinary proceedings, in which the defendant did not join, the judges considered that the three-dimensional mark corresponding to the shape of the “Le Pliage” bags deserved to be protected. The Court based its decision on the fact that as of 2015, registration was obtained for two three-dimensional marks claiming the original characteristics of the bag. The Court therefore concluded that by marketing its bags, the defendant had infringed these marks and committed unfair competition of servile imitation within the meaning of Article 2598 no. 1 of the Italian Civil Code.

The judges did not grant the plaintiffs the protection provided by Article 2(1)(10) of the Italian copyright law. According to the Court, in fact, the requirement of artistic value had not been proven because no proof of recognition by cultural and institutional circles, of exhibition in exhibitions or museums, of publication in specialized journals, of obtaining prizes or a high market value had been made. submitted.

The judges eventually issued an injunction under s. 124 of the Italian Industrial Property Code prohibiting the continued production, marketing, sale and advertising of the defendant’s products. At the same time, they ordered the definitive withdrawal of the sale of the counterfeit bags, a penalty being fixed in the event of delay in compliance.

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