The legal fake and trademark registration by a third party

With judgment no. 51754, filed on November 15, 2018, the Italian Criminal Court, section V, ruled concerning the distinction between the conduct integrant to the civil offence of unfair competition referred to in art. 2598 of the Italian Civil Code, no. 1 and the conduct integrant to the criminal offence referred to in art. 473 of the Italian Criminal Code.

In particular, the Judge of Legitimacy stated that the utilization of the names or distinctive signs creating confusion with those used by others or products imitating someone else’s are considered necessary and sufficient condition for civil tort. On the other hand, in order to constitute a crime, art. 473 of the Penal Code requires, more specifically, that other people’s trademarks or distinctive signs be the subject of counterfeiting or alteration.

According to the Court, in absence of the latter, the likelihood of confusion cannot constitute the offence. However, in order not to make the protection of criminal law completely ineffective, the principle set out above must be interpreted as meaning that the

“criminal relevance of the fact, pursuant to art. 473 of the Italian Criminal Code, when the different registered trademark is identical to the one known and its use on the product is accompanied by the replication of all the other distinctive signs, so as to go beyond the concept of “confusion” to reach a real “copying”


In that case, the Judge of Legitimacy intervened in matter that many have classified as “legal fake”.

The case involved a US company -owner of a EUTM – and an Italian company, owner of the homonymous trademark registered in the Republic of San Marino, where it had not been registered by the US company. The two trademarks could initially coexist because the trademark was filed in San Marino when there was no conflict between a Community trademark and a San Marino trademark as it would be today. As a result of this registration, at the lawful time, the U.S. company found on the market its products with its own trademark but that were not technically counterfeit. For this reason, it assumed a situation of unfair competition.

The Court of Cassation has established that it may represent a situation that went beyond competition and was a “copy” situation. It then annulled the judgment and returned it to the Court for a reconsideration of insufficient reasoning. In fact, the seizure could only be legitimate if it was properly motivated, revealing the penal relevance.