In fashion industryin recent decades, some emerging brands have become famous thanks to the ironic reworking of some well-known brands, just think of Versace as an example, which inserts the Medusa (symbol of the fashion house) within the Starbucks logo, or Armani which incorporates the Alitalia logo. The question appears to be of considerable legal importance: the use of a trademark used as a mere parody can constitute the crime of trademark counterfeiting pursuant to articles 473 and 474 of the criminal code?
The art. 473 of the Criminal Code states that “an infringer is anyone who counterfeits or alters trademarks or distinctive signs of industrial products, being able to know the existence of the industrial property right; the conduct of those who use these products also integrates the crime of counterfeiting”; while the art. 474 of the Criminal Code likewise punishes whoever introduces industrial products with counterfeited or altered trademarks or other signs; it also punishes those who hold these products for sale or sell them and put them on the market.
The Italian legislation does not protect the brand only in the provision of the penal code of the crime of counterfeiting, but outlines in the art. 20 CPI a series of safeguards which, read in conjunction with the aforementioned articles of the penal code, allow the interpreter to affirm that counterfeiting exists when the product can be confused – by consumers – with the original products.
The protection of the brand is also recognized at European level: it is stated, in fact, in the art. 27 of EU Directive no. 2015/2536[1]that the mere use of a trademark by third parties, consisting in artistic expression, can be exempt from being considered a crime if and only if the use in question complies with the customs of commercial and industrial loyalty[2].
Therefore, given these premises, we could state that if the use of the trademark is not able to confuse the consumer and if it is used consistently with customary practices in the commercial and industrial fields, if there is “artistic expression”[3] there would be no elements to delineate the crime of counterfeiting[4]. If this were the case, the problem would not even become apparent to the interpreter, yet it is necessary to evaluate the existence of the crime on a case-by-case basis on the basis of the way of understanding “artistic expression”[5].
The ruling on the FakeLab case.
In 2018, the fashion launched by the FakeLab brand was depopulated among teenagers, conceived by young creatives who revolutionized the way of making fashion by making it fun. The t-shirts made by this brand were nothing but parodies of renowned fashion brands including Dior, Prada and Fendi. According to what can be seen from the ethical code of this brand, it was immediately clear that they were mere emulations and never copies, therefore the name chosen by its creators was Fake Lab (the laboratory of the fake)[6].
The matter was immediately brought to the attention of the Court of Liberties of Ravenna: it was believed that the products whose marketing by FakeLab was complained of referred to brands that reproduced the logo of well-known luxury houses, without any license and without respecting the customs of the market. The facts, as succinctly described by the proposing party, specifically referred to goods bearing the parodic reinterpretation of logos well known to the public such as Fila, Lacoste, Batman and Superman, goods which the court of Ravenna ordered immediately for probative seizure. The defender immediately proposed a request for re-examination, which was rejected, and proposed again before the Court of Cassation. In the appeal, FakeLab’s lawyer argued the illegitimacy of the seizure of evidence due to the lack of fumus commissi delicti[7] as regards the crime of counterfeiting – which, in the present case, constitutes the predicate crime of the crime of receiving stolen goods – and, furthermore, this crime did not exist since the trademarks believed by the complainant to be forged had, in truth, been reworked in ironic key and used as starting points to then create images from scratch. Based on the provisions of art. 473 of the Criminal Code, in order to be considered counterfeit, a product must induce those who buy it to exchange it – or rather to confuse it – with a good coming from the fashion house which becomes the aggrieved party in the case.
The Supreme Court of Cassation, precisely on this case, ruled on 31 July 2019, with sentence no. 35166/2019, noting that the seized products were actually original, as they were characterized by images created through the use of well-known trademarks, but not for distinctive or imitative purposes but precisely for parodies, noting their artistic nature. The censored images ironically reproduced the famous brands, therefore they did not generate any confusion with the products coming out of the fashion industry Labs, therefore there is no counterfeiting. The Court annulled the contested order sanctioning the return of the goods to FakeLab[8].
The legal principle therefore emerges from the ruling according to which in the absence of risk of confusion for consumers, the parodic reinterpretation of well-known brands does not integrate the extremes of the crime of counterfeiting in the fashion industry.
The Diesel/Deisel case.
In some cases, however, the ironic breakdown of the brand becomes a real marketing strategy, almost as if the fashion house wanted to protect itself from the danger of counterfeiting.
Last 2019, around 1000 e-commerce sites were traced by the Authorities, simultaneously closed by them, which sold counterfeit Diesel products.
It is now known that the Diesel brand, for the past 3 years, has been inclined to resort to marketing strategies aimed at protecting its corporate image.
Around 90% of the garments bearing the counterfeit diesel logo were advertised and sold on various websites. These sites, after the discovery of the Authorities, including the Italian Guardia di Finanza, were blocked and closed definitively and, subsequently, the items present in the physical e-commerce warehouses were confiscated. Diesel, in its arduous fight against counterfeiting, has denounced the undue use of the logo and images by websites from all over the world, accused, specifically, of having violated the complainant brand’s copyright. The battle of the brand has not only taken place on websites, but also on social networks, especially Instagram, where over 5,000 advertisements of fake products have spread in a very short time. However, selling via e-commerce is only the last phase of the process that leads to the placing of counterfeit goods on the Italian market – in this regard it should be specified that the confiscated goods include clothing and accessories, such as jeans, sweatshirts, belts and special labels for the attribution of the Diesel brand. A recent study carried out by the Diesel task force showed that there were about 20,000 fake products on the market, seized between Turkey, the United Kingdom and Portugal.
The fight against Diesel counterfeiting has not only spread on the web, but has also extended to the stores that have seen the withdrawal of the contract of agreement with the company as no longer in line with the internal corporate strategy. The fight against counterfeiting has meant that the control actions confirmed the will of the Diesel company to fully safeguard the brand and the characteristics of innovation and creativity underlying the distinctive characteristics of the fashion industry[9]. Thanks to the help of the legal team and the work carried out on a daily basis, the phenomenon of counterfeiting and the illegal distribution of products through international customs and in the digital space is contrasted and remedies are efficient. Only the meticulous work of a cohesive team is capable of safeguarding and simultaneously protecting the brand and its reputation in every part of the world.
Image source: www.pixabay.com
[1] Ed. Directive on the approximation of the laws of the Member States relating to trade marks.
[2] LYON, The parody of well-known trademarks: is it counterfeiting?, diritto.it, available at
[3] MANGINI, TONI, Brief manual of industrial law, Milan, 2019.
[4] On the same line of thought Cass, Section V, no. 33900 of 08/05/2018 – filed 07/19/2018, PM in proc. Cortese, Rev. 273893; Section II, no. 9362 of 02/13/2015 – filed 04/03/2015, Iervolino, Rev. 262841; Section V, no. 25147 of 01/31/2005 – filed 07/11/2005, Bellomo, Rev. 231894, with reference to specific cases in the fashion industry.
[5] In order to understand what are the different interpretations given to the “artistic expression”, please refer to the contribution of BADIALI, The parody of the brand that enjoys reputation, Ius In Itinere, available on
[6] GALLETTA, All crazy about Fake Lab: the brand that revolutionizes the graphics of the most famous brands on t-shirts, SportFair, article available on
[7] Recalling the sentence issued by Cass. pen. Section 1 , Judgment n. 20189 of 08/18/2017, Rv. 645394
[8] Cass. Pen., Section II, 31 July 2019, n. 35166.
[9] SAHLI, DEISEL, the fake brand launched by Diesel, VanityFair, the fashion industry strategy available on
Lawyer, finalist of the II edition of the 4cLegal Academy, head of the Fashion Law area and deputy head of the Criminal Law area of Ius in itinere.
Maria Elena Orlandini was born in Naples on 2 July 1993. Thanks to her father’s experience, from an early age she became passionate about everything related to criminal law, so, having obtained her scientific high school diploma, she enrolled in the Faculty of Law at the University of the Sannio Studies.
He graduated with honors on March 20, 2018 with a thesis entitled “Mass Media and crime” supervised by Profs. Carlo Longobardo and Prof. Felice Casucci, in which she explores the modus through which social media and TV are able to change the perception of crime in society.
In 2019 he obtained the II level Master’s Degree in International Business Jurist with honors at the University of Padua – Treviso branch, specializing in economic criminal law, with a thesis entitled “The crime of bankruptcy and the reward measures envisaged by the new Business Crisis Code”, under the supervision of Prof. Rocco Alagna. In June 2020 you passed the course on economic criminal law held by Prof. Adelmo Manna, full professor at the University of Foggia, former member of the commission that approved Legislative Decree 231/2001. At the age of 27 he obtained the qualification to practice the legal profession at the Court of Appeal of Venice.
Since 2019 she has been following multiple projects related to Fashion Law and intellectual property, preferring the digital aspects in terms of Influencer Marketing.
In 2020 she was selected among the five young talents of the legal market and participated in the second edition of the 4cLegal Academylegal talent organized by 4cLegal, visible on the channel BFC of Forbes Italyon Sky.
In 2022 she enrolled in the professional refresher course in Fashion Law organized by the University of Florence.
Passion, curiosity, empathy, ability to see and self control are his strengths.
Collaborate for the areas of Criminal law And Fashion Law & Influencer Marketing of Ius in itinere.
e-mail: mariaelena.orlandini@iusinitinere.it
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