Recently, the Italian “Corte di Cassazione” issued an order in the field of comparative advertising and unfair competition (Cass.civile, sez.VI, January 7, 2016 order n.100).
Article 2598,2) of the Italian Civil Code provides that:
“Subject to the provisions that concern the protection of distinctive signs and patent rights, engages in act of unfair competition….anyone who steals the merits of the products or of the company of a competitor”.
In this case, a company presented its products under the same name used as a trademark by another and much more famous company.
At first instance and on appeal the Courts said that the company which was sued
“presented its products as similar (even same) to those of a well-known competitor, exploiting the reputation among the recipients of the advertising message and, in doing so, accrediting its products at customers without any effort of investment”
“in promoting its products, had improperly used the competitor’s mark, making express reference to the mark in the message and implicit reference in the context of the advertisement, with references to the “parent company” and with clear intention to accredit the quality of its products, by presenting said products as “same” than those marked and characterized by high quality standards”.
In the matter of comparative advertising and unfair competition the “Corte di Cassazione” has had the opportunity to enunciate some principles already previously established, in particular that
“Unfair competition for appropriation of the merits of the products or of the company of others (Article 2598,2) of the Italian Civil Code) does not consist in adopting, albeit in a parasitic way, material techniques or proceedings already used by another company (which may lead, instead, to unfair competition for slavish imitation), but occurs when an entrepreneur, in advertising or equivalent ways, attributes to its products or to its enterprise merits, such as medals, awards, qualities, indications, requirements, virtues, not owned by them, but owned by the products or the enterprise of a competitor, in order to alter the free choice of consumers”
(Cass.Sez.1, sentenza 9387 del 1994; Cass.Sez.1, sentenza n.6928 del 1983)