Italy jurisdiction report: Selective distribution case turns heads

In the present case, Sisley claimed that on the platform www.amazon.it, Sisley products were offered for sale in violation of the complainant’s selective distribution system, with consequent serious damage to the prestige and image of its trademark.

In particular, Sisley argued the counterfeiting of its ‘Sisley’ trademark by Amazon and unfair competition under article 2598 (1), (2) and (3) of the Italian Civil Code, claiming the non-applicability of the trademark exhaustion principle. Sisley also contended copyright infringement in relation to the unauthorised use of images reproducing Sisley products taken from some advertising campaigns.

With reference to the trademark exhaustion principle, the court verified the applicability of article 5 of the Italian Industrial Property Code, according to which once a product bearing a trademark has been introduced into the European territory, with the consent of its owner, the owner may no longer oppose the further and subsequent commercialisation of the product, unless there are “legitimate reasons”.

Those reasons may include the existence of a selective distribution network, namely if: a) the product being sold is a luxury or prestigious item which justifies the choice to adopt such a system; and b) there is a real detriment to the luxury or prestigious image of the trademark as a result of commercialisation by third parties outside of the selective distribution network.