With the recent judgement no. 576/2020, the Supreme Court has accepted the reasons of the English fashion house Burberry in the case for counterfeiting its - now we can say it - "famous" brand with an ornamental motif.

In the contested decision, the judges of the Court of Appeal of Rome had followed a "bizarre" argumentative procedure in order to exclude the appeal of the crime of infringement of the above mentioned trademark: and in fact, if on the one hand the appeal judge had established - unlike the judge of first instance - that it was not necessary for the purpose of infringing the penal rules on counterfeiting, that the words Burberry and the relative word mark were affixed on the Scottish motive, on the other hand he had denied the appeal of the crime of counterfeiting due to the unsuitability of the above mentioned figurative mark to create a univocal link with the English fashion house.

With this last judgment, the Supreme Court confirmed the decision of the Rome Court of Appeal in the part of the ruling that excludes the need to use the words "Burberry" on the fabric for counterfeiting purposes, considering that "trademark infringement also occurs in cases of partial reproduction of the trademark where it is likely to create confusion with the earlier registered trademark".

However, the Court then observed, in order to overturn the appeal decision, that this is particularly true in cases where the earlier mark is a well-known mark - i.e. when it is "known to a large part of the public and can be immediately recognized as relating to the goods and services for which the mark is used".

Therefore, there do not seem to be any doubts about the recognition of Burberry's reputation as an ornamental motif brand and its ability to distinguish and originate from the products on which it is affixed.

Despite the fact that the case therefore refers to a criminal offence (counterfeiting offence under Article 473 of the Penal Code) which protects public faith and does not concern the actual confusion of the public, this decision represents an important precedent for Burberry, as it openly recognizes the well-known character of the trademark and thus broadens its sphere of protection.