DESIGN | The Court of Brescia on the burden of proving priority on the market of an imitated product

On 5 December 2024, the Court of Brescia issued its order in an interlocutory proceedings for unfair competition by slavish imitation, setting a precedent on the burden of proof on the applicant. In the case at issue, the applicant, a manufacturer who marketed “aerating skylights” protected by a registered patent and design, claimed that the defendant had taken advantage of its role as a reseller by exploiting the applicant’s technical data sheets to manufacture an identical product called “ventilated skylight”. The Court ruled that imitation relevant for the purposes of unfair competition pursuant to Article 2598(1) of the Italian Civil Code requires the reproduction of the external characteristics with a distinctive capacity that can be linked to a certain company. Furthermore, the order stated that the fundamental requirement for establishing the distinctive character of the shape is that it has priority on the market over the imitated product, and that both elements must be adequately proven by the applicant, whereas the defendant has the burden of proving that the applicant’s product is not innovative or has lost its distinctiveness. Therefore, the Court rejected the applicant’s claim as the latter merely attached the product design without the related technical drawings, and had not even claimed that the information allegedly exploited by the defendant was confidential, thus failing to prove the unlawfulness of the alleged use.

Newsletter n. 104 – February 2025