Article: How to fight against unlawful practices affecting cosmetics and perfumes in Italy - recent trends
1. The sale of perfume and cosmetic testers on platforms.
The online sale of sample sizes of perfumery products and cosmetics is a growing trend.
It is well established that the sale of samples of cosmetic and perfumery products is unlawful and prohibited, as it takes place, without the consent of the trademark’s proprietor, as stated by the Court of Justice, in the judgment of June 3rd, 2010 (case 127/09). These principles are widely upheld by Italian case law on the subject (see, for example, the decision of the Court of Milan on June 19th, 2017).
The Court of Justice has reaffirmed and explained this principle at length, including in its judgement of 12 January 2011 n. 5775, emphasizing that the test samples are not distributed for commercial circulation on the market, as the provision of samples does not amount to an actual placing on the market.
In other words, by supplying free samples, the trademark’s proprietor withholds his consent to their further circulation on the market for other purposes.
On this matter, the Court of Naples recently issued an order dated June 14th, 2024 n. 7927, stating that, in the case of sale of perfume bottle testers, the word ‘sample’, or the phrase ‘not for sale’ prevents the implicit recognition of the trademark owner’s consent to their placing on the market, given that the indication of the prohibition of sale implies the clear intention of the trademark’s proprietor not to market the products, not only within the European Economic Area, but also outside it.
Namely, the judges emphasize that, in the present case, the application of the principle of exhaustion of rights must be ruled out, as it is clear that there is no consent from the trademark’s proprietor, as evidenced by the express prohibition of sale of samples affixed to the product packaging; moreover, in the present case, there is not even any implied consent by the trademark’s proprietor.
Testers are mainly distributed and offered for sale online via websites, as well as on social media, with the consequence that their unlawful circulation is very widespread with an increased prejudice for the trademark holder, due to the unauthorized offer on sale of testers of perfumes and cosmetics, together with other items, not having the same qualitative level.
2. Dupes and look-alike bearing renown trademarks.
Cosmetics and perfumes are affected not only by counterfeiting, but also by the sale of ‘dupes’ and equivalent products.
This phenomenon is widespread in Italy and is on the rise, as the latest statistics show that 53% of purchases involve the so-called ‘dupes’, made mainly by young people, including via the TikTok platform and social media sites, such as Instagram, which enable these products to spread more rapidly.
In this case, the remedies provided for under Italian law are effective and consist in pursuing the infringements before the civil competent Courts, starting with a formal notice. In the absence of a satisfactory response, consideration should be given to initiating urgent proceedings, on the grounds of infringement of trademark rights and, above all, unfair competition, since the Dupe products are modelled on famous fragrances and well-known cosmetics.
In such a case, therefore, Article 2598 of the Italian Civil Code applies, as this constitutes an unauthorized use of the rights exclusively attributable to the trademark’s proprietor.
Namely, Italian Courts sanction cases of “dupes”, particularly in relation to unfair competition and unlawful comparative advertising, where the imitated product causes confusion on the market, or unduly exploits the reputation of a well-known distinctive sign.
“Dupes” are therefore sanctioned under Italian case law, in accordance with the same principles applied to sanction the so called “equivalent perfumes”, pursuant to Article 2598 of the Civil Code, in terms of an unlawful parasitic exploitation of the reputation of renown trademarks, as established, for instance, by a decision of the Court of Naples, dated May 30th, 2017.
Alongside imitation of perfumes and cosmetics, there is also the model-fact situation of “look-alike”, affecting in particular toiletries, but also cosmetics (falling these products in the category of the so called “fast-moving” goods), consisting namely in the presentation of products, their packaging and their overall external aspect, in imitation of another party’s distinctive signs, that may be challenged in civil proceedings. The relevant claims are primarily based on unfair competition and free-riding, as well as on the misappropriation of others’ rights, and also trademark infringement, where the wrapping is protected as such, or design infringement, where the packaging is protected by this industrial property right.
Typically, a “look-alike” situation arises, when the packaging of a product, even if bearing the manufacturer’s trademark - which differs from that of the proprietor of the original distinctive sign - evokes, through the shape of the packaging, the labels, their positioning, the slogans, the designs and the colour scheme, the industrial and intellectual property rights of others, with an undue exploitation - by the responsible of the imitating product - of the exclusive rights of the trademark’s owner and the better-known product (as held, for example, by the Court of Turin on December 10th, 2019 and also by the Court of Milan on October 31rd, 2018, as well as on January 12th, 2016, in relation to “look alike” cosmetic products).
In particular, in these cases, the Court has imposed sanctions, on the ground of unfair competition, arising from slavish imitation, for the imitator’s use of the distinctive colours, identifying the product being imitated, finding that this conduct constitutes an unfair free-riding. Namely, in this model fact situation, the colours characterizing the imitated product constitute a de facto unregistered trademarks of the owner of the imitated good, duly enforceable in Italy, also as a case of trademark infringement.
As a matter of fact, in Italy, unregistered trademarks enjoy protection as the registered ones, along articles 1 and 2 of the Italian IP Code.
The Court of Turin expressed a similar view on August 10th, 2021. Furthermore, the same Court of Turin, in its ruling of January 29th, 2022, clarified that the affixing of the trademark of the manufacturer of the imitating product does not preclude trademark infringement and unfair competition, as the two products remain confusingly similar, due to the similarity of their trade-dress. It is therefore through a case-by-case approach that one can effectively fight against infringements of trademarks and industrial property rights, to prevent such infringements from reducing the appeal of trademarks in the long term - particularly if they are well-known - thereby undermining their distinctive character and reputation.
Article published in today’s Lexology newsletter written by our partner Paola Gelato.