by Laura Spagnoli and Elena Martini

With judgement no. 29391 dated 4 July 2019, the Criminal Court of Cassation ruled on the matter of patent infringement pursuant to Article 473 of Italian Criminal Code and rejected the appeal proposed by two companies, namely Roofy S.r.l. and Gestico S.r.l., against the Court of Brindisi’s order that had confirmed the criminal seizure of self-leveling spacers for placing tiles, produced and marketed by the appellants and deemed to infringe the patent owned by the counterparty, a company named Brunoplast s.a.s.

In this case, Roofy and Gestico contested before the Court of Cassation that the aforementioned criminal seizure was unlawful, since it had been carried out on objects other than those explicitly mentioned in the relevant decree, concerning “objects of the type ‘self-leveling spacers’ produced in a way that counterfeits the patent”. Roofy and Gestico argued that, on the contrary, no reference had been made to the components (knobs, screws, tie rods) and to the moulds that had actually been subjected to the measure by the Italian Tax Police.

However, the Criminal Court of Cassation rejected the appeal and stated that the Italian Tax Police had correctly carried out the seizure ordered by the prosecutor. In fact, the product description in the text of the decree clearly showed that the object of the seizure was not only the spacer itself, but also all the other objects necessary to compose and produce it. The decree made specific reference that all these constituted “body of evidence”. Therefore, the Judge concluded by affirming the following general principle: “if the decree concerning a criminal seizure refers specifically to a particular product, exactly identified, the individual components of this product, not yet assembled, or the mould necessary to produce it, cannot be deemed extraneous and exorbitant if there are specific references to them in the decree’s motivation”.