The Supreme Court of Cassation of Italy, by sentence no. 38797 of 13th October 2022, confirmed the legitimacy of the probative seizure of 2,547 Spiderman costumes, released by the Prosecutor of the Court of Naples against the Italian importer company.
Last year, the prosecutor of Naples validated the urgent seizure – operated by the Office of Customs of Naples 1, fraud prosecution division – by arranging the seizure of the fake costumes of the well-known Marvel superhero. The legal representative of the importer company was therefore investigated for the crimes of fencing (art. 648 p.c) and introduction in the country and trade of products bearing fake signs (art. 474 p.c.).
Following the rejection of the request of re-examination, the sole shareholder of the importer company acted in the Court of Cassation, arguing that there was not any infringement of the Marvel trademarks. According to the applicant, in fact, the seized costumes bore the trademark of the importer company and, therefore, the mere creation of a costume with the features of Spider-man superhero would not have been sufficient to constitute a crime. Nor it would have been relevant the fact that the character results to be protected, at European level, by the homonymous trademark registered by Marvel Characters Inc.
Nevertheless, the Court of Cassation declared unacceptable the appeal and condemned the appellant to the payment of the court expenses and of a fine of € 3,000.
To motivate the rejection, alongside the pecuniary penalty, it was the lack of legitimization of the appellant to act. They presented the appeal under exam as sole shareholder of the company recipient of the seizure, but without having formal representative power on the company.
Even though the motivation of the rejection was based on the customary reasons, the sentence recalls the majority case-law on the configurability of the crime of trade of products bearing fake trademarks.
As a matter of fact, it was clarified that “the reproduction of the fictional character protected by a registered trademark, even though not faithful but expressive of a strong similarity, integrates the crime of trade products bearing fake signs, when it is possible to find an objective and undoubtedly possibility of confusion of the images, such as to induce the public to erroneously identify the merch as originating from a specific manufacturer” (Cassazione penale, sez. II no. 20040 of 20th April 2011).
More recently, the Supreme Court of Cassation restated that whether the infringement is rough does not have any relevance “considering that art. 474 p.c. protects, mainly and directly, not the free determination of the purchaser but the public faith, intended as the reliance of the citizens on the trademarks and distinctive signs which identify industrial products and guarantee the circulation also to protect the holder of the trademark” (Cassazione Penale, sez. VII, no. 18176 of11th May 2021).
On the contrary, the configurability of the crime at issue was excluded against those who “sell new and original products created through the use, for non-imitational purposes but, rather for parody – that is artistic and descriptive – of known trademark and characterized by images aimed at making an ironic reproduction, not suitable to create confusion with products protected by trademarks” (Cassazione penale, sez. II, no. 35166 of 21th May 2019).
Ilaria Feriti