The false of author is always a crime

Recently, the Italian “Corte di Cassazione” has reaffirmed a principle which is peaceful in Italian case-law, namely that also the sale of goods bearing trademarks which are clearly false is an offense under Article 474 of the Italian Criminal Code.

Relevant law

Article 474 of the Italian Criminal Code punishes both the conduct of those who introduce into the State, in order to gain profit, industrial products bearing marks or other distinctive signs, domestic or foreign, counterfeit or altered (penalty of imprisonment from one to four years and a fine from Euro 3,500 to Euro 35,000) and the conduct of who holds for sale, offers for sale or puts into circulation, in order to earn profits, industrial products bearing marks or other distinctive signs, domestic or foreign, counterfeit or altered (imprisonment up to two years and fine up to Euro 20,000).

The case law admits that the crime even occurs when counterfeiting is coarse.

False of author and public faith

In fact, the law wants to protect public faith as “confidence of citizens in trademarks and distinctive signs”.
In its judgment 28423 of 27 April 2012, the Court already stated that:

“The legal interest protected by the article 473 and 474 of Criminal Code is the public faith in an objective sense, to be interpreted as the trust of citizens in the marks or distinctive signs that identify intellectual works or industrial products and guarantee their circulation, and not the trust of the individual, so that, for the existence of the crime is not necessary to create a situation likely to induce the customer in error on the genuineness of the product; on the contrary, in the presence of a counterfeiting, the crimes are configurable even if the buyer has been made aware by the seller of the lack of authenticity of the brand”.

the Italian Court of Cassation (judgment n.14090 of 8 April 2015) affirms that the crime occurs even when

“the falsity of the goods is clear and obvious, because the marking is for guarantying fair movement of goods on the economic market”.

The law prohibits the reproduction of the registered trademark on an industrial product, and the “Corte di Cassazione” specifies that:

“The confusion that the rule wants to avoid is between brands and not between products, that is, between the registered trademark and the sign illegally sold in a clearly deceptive way, since the law punishes the reproduction – without authorization – of the registered trademark on an industrial product: … the word “false of author” does not empty of criminal valence the counterfeiting, as the crime exists for the (ontologically misleading) illegal reproduction of the registered trademark …the mere reproduction is itself sufficient to be a crime”.

Even in the past (Corte di Cassazione n. 14876 of 9 January 2009) the Court had ruled for the existence of the crime under Article 474 of the criminal code despite the presence of the words “copy of author” of products bearing counterfeit marks, because

“it is a crime of danger and for its existence it is necessary only the attitude of the falsification to generate confusion, with reference not only to the time of purchase, but also to the subsequent use”.

Further judgments about the false of author

There are many other judgments of the “Corte di Cassazione” claiming the same principle – namely that also the sale of a brand which is clearly false is a crime – and among these we mention, by way of example, the following:

Cassazione n. 15080 of January 12, 2012:

“We have to reaffirm that the affixing of the words “Imitations of Author” on industrial products bearing counterfeit marks does not exclude the integration of the offense under Article 474 c.p. (Cass.Pen., Section 5, 25.09.2008, n. 40556 with reference to the affixing of the different wording “fac simile”); in fact, the offense in exam constitutes a crime of danger against the public faith in which it is sufficient also the only attitude to create confusion, with reference not only to the moment of purchase, but also to the subsequent use of the product distinguished by the false trademark. Hence follows that you cannot speak of impossible crime when counterfeiting is coarse or even when the conditions of sale – for the price, the place of exhibition, the personal characteristics of the seller – are such as to exclude the reasonable possibility that customers being misled”.

Cassazione n. 49643 of November 28, 2014:

“… We agree the interpretation according which there is the crime of Article 474 cp in case of keeping for sale of goods bearing counterfeit trademark with no relevance of the coarse counterfeiting, considering that Article 474 cp protects, primarily and directly, not the free determination of the purchaser, but the public faith …it is a crime of danger and for its configuration it is not necessary the fulfillment of deceit, not being the impossible crime if the coarseness of the counterfeiting and the conditions of sale are such as to exclude the possibility that buyers are misled”.

Cassazione n. 33543 of October 5 2016:

“There exists the crime of Article 474 of the Criminal Code when the sale of products falsely marked and displayed along with the original ones; for this purpose, it is not relevant the fact that the buyers may have knowledge of the falsity of the brand…it is not important that the buyer is actually deceived or even aware of the falsity, but only that the counterfeit trademark is liable to make the product apparently coming from a particular manufacturer”.

It is a crime even if you inform the buyer that you are selling a fake

Also the seller who warns the buyer the mark is not original commits a crime

“because the indictment wishes not to ensure the single buyer as such, but rather the movement of the goods bearing registered trademarks”ì

(Cassazione n.28423 of 27 April 2012).

The Cassazione specifies that

“the criminal law does not defend, primarily and directly, the self-determination of the purchaser, but he public faith in the objective sense, understood as the trust of citizens in trademarks and distinctive signs, which identify the intellectual property and industrial products and ensure their circulation also for the protection of the trademark owner; it is, therefore, a crime of danger and for its configuration it is not necessary the realization of the deception, not being the crime “impossible” if the coarseness of counterfeiting and the conditions of sale are such as to exclude the possibility that buyers can be deceived”.