The Milano court has for the first time in Italy granted a substantial compensation for damages

The Milano court has for the first time in Italy granted a substantial compensation for damages

The IP specialized section of the Milano court has for the first time in Italy granted a substantial compensation for damages arisen from trademark infringement and breach of license agreement.

The lawsuit was started by the plaintiff E.I. Dupont de Nemours & Co. and its Italian subsidiary company against Bialetti Industrie, an Italian well known manufacturer of coffee percolators and pottery, holder of a license to use the famous patented Teflon® non-sticking coating on their pots and pans, accused to apply instead a similar coating indicated as Teflon® film.

The court, with decision No. 3496/2014 taken on February 13, 2014 and deposited on March 12, 2014, rejected the Bialetti’s counterclaims of invalidity of Dupont EP 1016466 B2 and lapse of the Teflon® trademark registration for dilution due to common use of the word, recognizing and declaring valid, in force and infringed both the patent and the trademark registration, as well as Bialetti’s default and non-fulfillment of the obligations of the license agreement.

As a consequence, Bialetti was sentenced to a number of indemnifying actions, namely: a compensation for damages of EUR 500,000 plus legal rate of interest; prohibition to use the trademarks Teflon® and Dupont® for pottery coated with another product, and in any case to use any other coating infringing the Dupont patent; a penalty of EUR 10 for each infringing piece and EUR 1000 a day for any subsequent ascertained violation; withdrawal from the market of all the infringing products and destruction of all labels, packaging, products and advertisements making reference to said trademarks, patent and license agreement; publication of the decision on the most important Italian newspaper; refund to plaintiffs of court and legal expenses, including the charges of the expert witnesses.

The decision is a milestone in the Italian IP judicial history, where decisions were very often too much mild, disappointing and frustrating for the holders of IP rights, in addition to the length  of the proceedings. Of course this is a first instance decision, but we hope that it will mark the start of a new trend in the Italian IP litigation.