look-alike

Registered design protection prevails on unfair competition and look alike provisions (absent robust evidence)

The market for plant care products is shared by companies facing each other on the shelves of few specialized b2c shops like garden centers and nurseries, which mainly offer products for sale by type and allocate them in contiguous spaces.

To distinguish its products from those of its competitors, Vigorplant, a company which produces and markets potting soils and fertilizers, launched in 2019 a new range of five potting soils, characterized by packaging with a different color per product type and a new top-of-the-line product.

These packagings featured a peculiar division into two parts of the bag and the placement of three pictograms, exemplifying the performance of the product, in a specific area, in addition to the choice of a single color for each potting soil that it contained.

The top-of-the-line potting soil, had, its own packaging, colored with iridescent blue and was also registered as a simple design.

Shortly after the launch of this packaging, Vigorplant found on the market the products of a competitor, Tercomposti S.p.A., presented in packs that reproduced not only Vigorplant classification by color and its reference products’s stylized representation, but also the same pictograms placed in the same position as those on Vigorplant's packaging.

Sensing a threat of jeopardization of the commercial success of its new potting soils, Vigorplant applied for a PI injunction and seizure against Tercomposti's packaging, acting against slavish imitation and look-alike (under Art. 2598 of the Italian Civil Code) and, with specific reference to the packaging of the top-of-the-line potting soil, enforcing its registered design (pursuant to Art. 31 of the Italian Civil Code).

In examining the fumus boni iuris requirement, the Court took position on the infringement of the registered design, establishing that the enforced registration met all the requirements for validity set out in Articles 32 - 33 bis of the Industrial Property Code, namely: lawfulness, novelty and individual character. With specific reference to the latter requirement - despite the fact that it is not possible to claim exclusivity regarding those elements depicted on the packaging such as flowers, the earth, informative pictograms and the color blue - the general appearance of the bag was deemed to be well characterized by the specific arrangement of the above mentioned elements and by the predominance of the color blue with an iridescent effect, characteristics which were deemed not to be present in other products launched on the market prior to registration but, on the contrary, could be found in the Tercomposti bags, which created the same overall impression as Vigorplant's one.

Not differing sufficiently from the Vigorplant packaging design, the Court held that Tercomposti’s bags were infringing the claimant’s exclusive rights and granted an injunction, backed by penalty, against the latter with reference only to the product named “Superterriccio”.

The other bags by Tercomposti were not, however, deemed to be in breach of Vigorplant's packaging, as they diverged more from the overall impression created by the registered design.

From the unfair competition’s standpoint, the Court found that the claims of parasiticity and slavish imitation had not been supported by sufficient evidence: according to the Court, Vigorplant should have highlighted all the elements that could prove the distinctiveness of its packaging.

In the same way, the decorative elements with different colors and layout on Tercomposti packaging were deemed not to illicitly hooking to Vigorplant’s ones in a way apt to create that link between the two products which case law qualifies as look alike (i.e. taking over the characteristics of a well-known product).

Regard synchronic parasitic competition (which takes the form of the simultaneous resumption of all or many of a competitor's products), the Court held that there was not an overall resumption of Vigorplant's commercial proposals by Tercomposti.

In view of the findings of this case, it is clear that an action for unfair competition, in all its forms (parasitic, slavish imitation, tying) must always be supported by robust evidence to substantiate the claim.

Court of Milan, order of 4 May 2021