The Court of Rome on the imitation of a mannequin head model

With its 5 August 2015 ruling (full text here, in Italian), the Court of Rome granted an interim injunction and a seizure order against an Austrian luxury legwear and bodywear company which – one year after terminating a long commercial relationship with an Italian mannequin manufacturer, relating to supply of a mannequin head model – began using a mannequin head model in some of its stores which was almost identical to the one designed by the Italian manufacturer but was neither supplied nor produced by said manufacturer.

The mannequin head model was not the subject-matter of a design registration. Having been on the market for decades, the model was not even protectable as a non-registered community design. As for its possible copyright protection, which the Italian mannequin manufacturer tried to claim, this was not granted by the Court of Rome (at least at the interim stage of the proceedings). Nevertheless, the Court of Rome found the use of the imitating mannequin heads made by the Austrian company to be an act of unfair competition, contrary to honest practices, under Article 2598 no. 3 of the Italian Civil Code (CC) – and enjoined the Austrian company from further displaying the mannequin heads in its stores. The use of the “imitating” mannequin heads, said the Court, would allow the Austrian company to exploit the commercial and creative efforts of the Italian manufacturer. Moreover, it added, this use would make the mannequin heads less appealing on the market, diluting their uniqueness.

Two aspects of the decision deserve a mention.

First of all, the imitation of products not covered by IP rights was traditionally repressed under Article 2598 no. 3 CC only where the imitation was of a systematic nature and concerned a plurality of products [the so called “parasitic unfair competition”, on which see the leading case Court of Cassation, 17 April 1962, no. 752, Motta v. Alemagna and more recently Court of Cassation, 29 October 2015, no. 22118]. The decision of the Court of Rome – concerning the imitation of a single product – goes further, in line with a recent trend in Italian case law, which has more and more frequently repressed as unfair competition under Article 2598 no. 3 CC the imitation of single products or economic initiatives (see for instance Court of Milan, 5 May 2012, in DeJure), notwithstanding the absence of provisions specifically prohibiting their imitation, on the grounds that the costs and investments borne by a competitor are, in themselves, worthy of protection and that exploiting these costs and investments without remunerating the competitor is therefore unlawful. Compatibility of this approach with the freedom of economic initiative under Article 41 of Italian Constitution is far from being certain.

Secondly, it was not clear – at the interim stage of the proceedings – whether the Austrian company directly manufactured the mannequin heads at stake or commissioned them from a third manufacturer. However, the Court of Rome found that this circumstance was not decisive with regard to the liability of the Austrian company for unfair competition, stating that, even if the mannequin heads had been simply commissioned by the Austrian company from a third party, the Austrian company would still be liable for its “significant and substantial” contribution to the unlawful conduct. On this point, the decision seems to be consistent with the well-established Italian case law concerning third party liability for acts of unfair competition, whereby all parties who play a role in the unlawful conduct are liable for unfair competition, included those who are not competitors, provided that the unfair competitor takes advantage of the conduct of the non-competitor.

Riccardo Perotti

Court of Rome, 5 August 2015, Almax v Wolford

The CJEU sheds light on the way to calculate the term of SPCs

Article 13 (1) of Regulation EC No. 469/2009 (concerning the supplementary protection certificate for medicinal products, “SPC”) provides that SPCs are calculated on the basis of “the date of first authorisation to place the product one the market in the Community”. Existing SPC regulation is however ambiguous on this point and EU member states have adopted divergent practices.

By decision of 2 October 2014 the Oberlandesgericht Wien has referred questions to CJEU on a preliminary ruling regarding the calculation of SPCs term under Article 13 (1) of Regulation EC No. 469/2009.

The referral concerned two queries: a) whether the date of an MA (Market Authorization) has to be determined according to Community law or that of the member state where the SPC application is filed; b) whether (under Community law) “the date of the first authorisation” – as per Article 13(1) of the Regulation – is the date the MA actually issued or the date the applicant is notified.

The CJEU issued its Decision on 6 October 2015 in the case C-471/14, Seattle Genetics Inc. v Österreichisches Patentamt (full text here).

Confirming both the conclusions and the arguments submitted by the Advocate General Niilo Jääskinen in his Opinion as of September 10, 2015, the Court clarified: a) that, since Article 13(1) of aforesaid Regulation contains no express reference to the laws of the member states, it is necessary to adopt an independent and uniform interpretation that will be valid throughout the EU; b) that the date of the first authorisation is a matter of Community law, not of the legislation of the member state where the marketing authorisation has effect. The Court declared that the EU legislator chose to use the Regulation as the legal instrument to create a standard SPCs system.

In evaluating the second question, the CJEU further pointed out that SPCs were created to ensure sufficient protection to encourage pharmaceutical research, in light of the fact the period of exclusivity granted by patents concerning pharmaceutical products is insufficient to cover the R&D investment necessary.

In this context, the right to market a new drug arises on the date the patent holder becomes aware that the MA has been issued.

The Court therefore answered the second question by confirming that it is the date of notification of the MA that is to be considered the “date of the first authorisation”, this is the date to be taken into account in calculating the term of SPC.

As a result of this ruling, SPCs holders will benefit from a longer term of protection – by up to some weeks. Furthermore, a number of SPCs will likely need to have their duration recalculated.

 Matteo Aiosa

Court of Justice, Eighth Chamber, 6 October 2015, C-471/14, Seattle Genetics Inc. v Österreichisches Patentamt.