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