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Gabriele Rossi
What distinguishes lawful inspiration from unlawful product copying? The case examined by the Court of Brescia (December 5, 2024) provides a valuable interpretive framework to understand the boundary between unfair competition and free competition. A former reseller, after years of collaboration with the original manufacturer, begins marketing a similar product: is this unfair competition or legitimate rivalry?
This article analyses the Court’s decision, explaining which elements must be proven by a party alleging slavish imitation and what legal tools can be employed to prevent product copying, thereby avoiding costly and uncertain litigation. Discover how to protect your business and which strategies to adopt to safeguard design, innovation, and market competitiveness.
In a competitive market, the line between inspiration and unlawful imitation can be thin. Article 2598, no. 1, of the Italian Civil Code protects businesses against unfair competition by prohibiting the slavish reproduction of a product that may cause consumer confusion. However, not every similarity amounts to a violation: in order for slavish imitation to be deemed unlawful, the copy must concern non-functional aesthetic elements and must be capable of generating a risk of confusion among the public.
A recent case, decided by the Court of Brescia by order of December 5, 2024, offered an important interpretation of what must be demonstrated by a party claiming slavish imitation. The decisive element, according to the Court, is the presence of “fumus boni iuris”, that is, a prima facie plausibility of the alleged infringement. In its absence, the judge may not grant precautionary measures, regardless of the legal soundness of the claim.
But how did the Court apply these principles? Let us examine the concrete case that led to this decision.
The Court of Brescia, by order of December 5, 2024, addressed a case of unfair competition by slavish imitation in the skylight sector. The dispute arose from a business relationship between two companies: a manufacturer and a former reseller. For ease of understanding, we will use fictitious names:
The manufacturer of Arioso had granted a reseller the right to sell its skylights for four years. Once the relationship ended, the former reseller began producing and marketing its own skylight, Ventoso, which displayed significant similarities with the original. Believing this to be a case of slavish imitation, the manufacturer requested the Court to immediately block the production and sale of the new model, invoking the protection of Art. 2598, no. 1, Italian Civil Code.
However, the Court rejected the petition, holding that the claimant had failed to sufficiently demonstrate the existence of a violation. The judge emphasized that similarity between products is not in itself sufficient to establish unlawful slavish imitation:
“The claims made in the petition and the documentary evidence submitted do not allow even a summary finding of the alleged acts of unfair competition” [translated by the author] (Court of Brescia, order of December 5, 2024).
One of the key aspects of the decision concerned the absence of “fumus boni iuris” namely the initial plausibility of the right invoked. According to the Court, the original product did not appear to possess distinctive features likely to cause confusion among the public, and the claimant had not submitted sufficient evidence to show that Ventoso improperly capitalized on the aesthetic appearance of Arioso.
This ruling reaffirms a key principle of unfair competition law: it is not enough to show that two products are similar; rather, it must be demonstrated that the copied product contained non-functional and distinctive features capable of identifying a specific business.
But how can a company demonstrate slavish imitation in court? Let us examine this in more detail.
Proving the slavish imitation of a product is no simple matter. It is not sufficient to point out a similarity between two products: the claimant must demonstrate that the copied product possessed non-functional aesthetic features, that it was original and distinctive, and that its reproduction gave rise to a risk of confusion among the public.
The Court of Brescia, in its order of December 5, 2024, reiterated that in order for slavish imitation to be considered unlawful under Art. 2598, no. 1, of the Italian Civil Code, the claimant must prove that the imitated product had an innovative design, characterized by non-functional distinctive features, and that their reproduction caused the public to believe that both products originated from the same undertaking.
In this regard, the Italian Supreme Court has clarified:
“Imitation relevant under Art. 2598, no. 1, Italian Civil Code, does not require the reproduction of any form of the competitor’s product, but only of those external features which have an individualizing effect and are capable, by virtue of their distinctive capacity, of linking the product to a specific company” [translated by the author] (Supreme Court, no. 948/2023).
Case law thus confirms that slavish imitation does not protect technical or functional characteristics, but only superfluous forms that confer a unique visual identity.
Therefore, the party alleging slavish imitation must prove three key elements:
This last element greatly depends on the purchasing context. For a mass-market item, such as a supermarket product, the consumer’s level of attention is lower, and the risk of confusion is higher. On the other hand, for more complex and costly goods, the buyer tends to pay greater attention to brand and detail, reducing the likelihood of confusion.
In the case of the Arioso skylight, the Court rejected the application for interim relief precisely because the claimant failed to sufficiently demonstrate these three elements. The burden of proof always lies with the party alleging imitation, who must show that their product possessed distinctive and original features.
Only afterwards may the defendant be required to prove the contrary, for instance by showing that the contested features were already widespread in the market and did not exclusively identify the claimant’s product. On this point, quoting the Supreme Court, the Court of Brescia reaffirmed that:
“The burden lies with the claimant to prove the priority of use of a certain shape and its distinctive character; only subsequently does the burden shift to the defendant to prove the lack of novelty or the loss of distinctiveness of the claimant’s product” [translated by the author] (Supreme Court, no. 29522/2008).
If the claimant fails to prove the novelty and distinctive capacity of their product, the judge will reject the claim for protection—as occurred in the case at hand.
In truth, when a business is forced to act on the grounds of unfair competition, it often does so because it has underestimated its own value—or only realized it after being “plagiarized”. Normally, original products call for registration and patent protection. If a company genuinely believes in the innovative nature of its product—whether aesthetic (design) or inventive-functional (through a utility patent, or alternatively a “utility model”, which is a form of short-term protection available in several non-U.S. jurisdictions)—the logical first step is to protect it in advance, using industrial property tools.
Those who choose not to patent, not to register a model, and not to invest in preventive legal protection, should not expect the judge to offer ex post protection through unfair competition claims. Courts are reluctant to compensate for the entrepreneur’s inertia in defending their intangible assets.
Moreover, an action based on Art. 2598 of the Italian Civil Code entails a high burden of proof, requiring the claimant to prove that the copied product had non-functional aesthetic elements, that it was original and distinctive, and that its reproduction created a risk of confusion. By contrast, preventive protection is far more effective, through legal instruments that simplify defense and strengthen a business’s market position—such as utility patents, “utility models”, and design patents (see also: “Patent, utility model or registered design?” by G. Regolo).
A primary means of protection is the registration of industrial property rights. Unlike unfair competition protection—which requires proof of consumer confusion—the validity of an exclusive right is presumed by law and grants the owner exclusive rights regardless of actual diversion of clientele.
In the case examined by the Court of Brescia, the claimant had in fact registered a multiple ornamental design for its skylight. However, since the legal claim was not based on infringement of that exclusive right, the claimant was subject to a heavier evidentiary burden.
Another essential tool in practice is the contractual structuring of business relationships. When a company entrusts the production or distribution of its products to third parties, it may adopt exclusive distribution agreements and non-compete clauses. These tools reduce the risk that a former business partner, as in this case, may exploit acquired information to enter into direct competition with the original manufacturer.
The absence of an explicit contractual constraint may in fact make it more difficult to counter the ethically questionable conduct of the former reseller. After all, in a free market, competition must be protected in the interest of the public, more than in that of the individual entrepreneur. In the Arioso case, the claimant argued that the former reseller had made use of technical and commercial information obtained during their previous relationship, but was unable to demonstrate that such information was confidential and protected by non-disclosure agreements. A well-structured contract might have reversed the outcome of the dispute.
Therefore, the need to protect a product should not arise only once copying has occurred, by filing an unfair competition claim, but should instead be based on a comprehensive upstream strategy, combining industrial rights, contractual agreements, and active monitoring of a company’s intangible assets and creative output.
Gabriele Rossi
