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JUrISdIctIOn repOrt: ItALY
crImInAL LAW prOVISIOnS
prOtect SpIder-mAn
Julia Holden and Silvia pugnale
Trevisan & Cuonzo Avvocati
A ruling by the Italian Supreme Court (Decision no. 22050, April 22, 2009)
“tHe cOUrt rULed tHAt eVen IF tHe
has confirmed that cartoon characters, including Spider-Man, can be
reprOdUctIOn OF cHArActerS cOnSIStS
considered fully registrable trademarks, signs and/or symbols. As such, these
have the protection of the relevant criminal laws relating to the placing on
OF tHe reprOdUctIOn OF A SHApe
sale, possession and sale of products bearing infringing trademarks in the
cOrreSpOndInG tO tHe prOdUct, It dOeS
Italian territory.
nOt FALL WItHIn tHe ScOpe OF tHe ArtIcLe
In 2003, the Court of Rome, in proceedings against a Chinese citizen, held
9 exceptIOn And, tHereFOre, cAn be
the defendant to be in breach of Article 474 of the Italian Criminal Code
reGIStered AS A trAdemArK.”
(Placing Products with False Signs in Commerce in the National Territory)
for being in the possession of toys lacking the European Community ‘CE’
mark and for reproducing characters, including the well-known cartoon
registered as a trademark. This being the case, infringement of the same
character Spider-Man.
falls within the provisions of Article 474 of the Italian Criminal Code.
The defendant was found guilty but filed an appeal with the Rome Court of
This decision forms part of a somewhat ‘inconsistent’ Supreme Court
Appeal, which confirmed that there had been a violation of the law pursuant
case law. In April 2001, the Supreme Court stated that a crime pursuant
to Article 474, upholding the first instance decision.
to Article 474 “does not concern goods which merely imitate industrial
products without reproducing either an infringing trade mark or distinctive
A further appeal was lodged with the Italian Supreme Court. On higher signs”. The court decided that introducing Pokémon, Scooby Doo and
appeal, the defendant claimed not to be liable as the toys did not bear false Winnie the Pooh soft toys in the national territory for commercialisation
trademarks or signs as provided by Article 474. The defendant claimed that did not constitute a crime pursuant to Article 474, since such toys did
this provision applied to persons who “introduce, have in possession, sell, not bear the trademarks of the authorised licensees for production and
distribute creative works or industrial products bearing national or foreign distribution of the products.
counterfeit trademarks or signs”. According to the defendant, the toys being
sold were only a rough imitation of the original products and, therefore,
With the decision of May 25, 2004, the Supreme Court reversed the trend
Article 474 did not apply.
on this issue, stating that the production and sale of a series of products
reproducing characters protected by trademark registration (in this case
Unsurprisingly, the Italian Supreme Court did not agree with the the well-known Italian cartoon character Calimero), although not being
defendant’s arguments. Notwithstanding some Supreme Court relevant identical reproductions and not bearing any trademark, name or other
case law to the contrary, it found that Article 474 can also be applied name sign, were caught by Article 474 and thus constituted a criminal
to unlawful acts of counterfeiting/reproducing characters, including offence.
cartoon characters and videogame characters, even if these are also
protected by copyright.
With this latest Spider-Man decision, the Supreme Court has clearly
ruled that if a character is protected by registration, its unauthorised
The Court stated that the relevant IP civil law (the Italian Industrial Property reproduction is unlawful not only from a civil law perspective but also
Code, Law Decree no. 30/2005) does not question the protection of shape from a criminal law perspective and, hence, should be considered as a
trademarks, since Article 7 of the Italian IP Code, in line with the EU Trade criminal offence under Article 474 of the Italian Criminal Code such that
Mark Harmonisation Directive of 1989, includes shape trademarks amongst criminal sanctions may be imposed.
the registrable signs, with the limited exception of signs that are made up
exclusively of a shape that: (i) is imposed by the nature of the product; (ii) is
necessary to reach a technical result; and (iii) gives substantial value to the
product (Article 9, Italian Industrial Property). Julia Holden is a solicitor at Trevisan & Cuonzo Avvocato. She can be
contacted at: jholden@trevisancuonzo.com
The Court ruled that even if the reproduction of characters consists of
the reproduction of a shape corresponding to the product, it does not Silvia Pugnale is an attorney at Trevisan & Cuonzo Avvocato. She can be
fall within the scope of the Article 9 exception and, therefore, can be contacted at: spugnale@trevisancuonzo.com
www.worldipreview.com World Intellectual property review September/October 2009 63
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