Industrial and Intellectual Property, Unfair Confusionary Competition and Counterfeiting of the Registered Trademark, Milan Court, Fourteenth Section, Companies Court, Judgment no. 2622 of March 19, 2021
Art. 125 c.p.i
Counterfeiting of trademarks and acts of confusing unfair competition, request for inhibition of the use of distinctive signs, order to withdraw from the market and destruction of all products marked by them, establishment of a penalty, publication of the sentence, and request for compensation of all pecuniary and non-pecuniary damage.
For the purposes of settling the damage, the rule that must be applied is the provision referred to in art. 125 c.p.i., which provides that the compensation due to the injured party is paid according to the provisions of art. 1223, 1226 and 1227, Civil Code, having to take into account the negative economic consequences, including the loss of earnings of the owner of the injured right and the benefits achieved by the author of the violation, or, in appropriate cases, also of elements other than economic ones, such as moral damage caused as a result of the violation committed to the same holder of the right, specifying in paragraph 3, as an alternative form to compensation, the restitution of the profits made by the author of the same violation.
Equitable quantification, pursuant to art. 1226 of the Italian Civil Code.
Use of the fair price criterion, which allows you to determine the loss of profit in an amount not less than that of the fees that the infringer would have had to pay if he had obtained a license from the owner of the injured right.
In the present case, this royalty must be determined on an equitable basis, in consideration of the advantage that would otherwise derive for the infringer in being granted a “compulsory” license without incurring the related costs and charges.
With regard to its amount, it is considered appropriate to apply a royalty determined in the amount of 15% of the turnover, taking into account both the importance of the brand …, proven by the fact that various operators in the sector had chosen to use this sign to distinguish the same products, or an increase due to the illegality of the defendant’s conduct.
The court also considers it appropriate to recognize as moral damage the total sum of € 8,000.00 to be jointly and severally borne by the defendants, taking into account the debasement that the trademark …. has suffered due to illicit use.
April 12, 2021
Source Corporate Jurisprudence