Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, both registered and unregistered
This article first appeared in World Trademark Review magazine issue 45, published by The IP Media Group. To view the issue in full, please go to http://www.worldtrademarkreview.com/
The shape and appearance of innovative products can enjoy strong protection if these have been recorded (a registered design), but also, under certain circumstances, in the absence of registration (an unregistered design).
Framework of protection
The national framework for designs is set out in the Code of Industrial Property (Legislative Decree 30/2005). The EU framework is based on:
• the EU Community Designs Regulation (6/2002); and
• EU Regulation 2245/2002 on the modalities of execution.
The appearance of the whole product or part thereof – in particular, the characteristics of the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation – may be the sub ject of national or Community registration as a design, provided that, according to Article 31 of the Code of Industrial Property and Article 3(1) of the Community Designs Regulation, it is new and has individual character.
Italian legislation offers no protection to unregistered designs, although protection is provided by Article 1 of the Community Designs Regulation. This latter rule entered into the Italian legal system through its systematic application by the courts, so that in Italy, even unregistered designs are now strongly protected.
The key differences in the protection of registered and unregistered designs are as follows:
• A registered design is protected for five years (renewable five times for a maximum protection period of 25 years), while an unregistered design is protected for three years.
• In the case of unregistered designs, the requirements of novelty, individual character and copying must be fulfilled in order to prove counterfeiting.
The protection afforded by Italian case law based on the application of Community law is particularly significant in the
field of fashion. In this area, two recent decisions of the Court of Naples should be considered. The first concerned an unregistered design and the second dealt with registered designs.
The first case originated from an action brought by a well-known children’s clothing company, which sells a wide range of innovative clothing and accessories that are successful based on the uniqueness and originality of the product design and the high quality of the products. This company designs products itself and has become famous both through its own trademarks and as a licensee of other well-known trademarks in the same field.
The claimant, in the course of a global fashion event, presented its spring/ summer collection bearing its trademarks, including a set of dresses dedicated to the city of Paris and another set related to Alice in Wonderland. The dresses had peculiar graphic and stylistic features: the ‘Paris’ line used the combination of white, blue and red, as well as different accessories such as ribbons, bows and beads that recalled the French tricolor, while other dresses were characterised by a stylised clock or cat.
The claimant identified that some other retailers were selling clothes that were identical or very similar to those contained in his spring/summer collection, and found that these clothes were being marketed by the respondent under its own trademark.
The Court of Naples considered the above-mentioned requirements for unregistered designs and found the claim to be well founded because all of the applicant’s clothes were eligible for protection under the Community Designs Regulation, fulfilling the criteria of novelty, individual character and copying.
Regarding the requirement of novelty, the Court of Naples gave a broad interpretation, noting that it “shall not be understood in a relative sense, according to the so-called market approach and it is not excluded by the presence in the product of themes taken from known works of art when these have provided ideas and aesthetic inspirations which, transferred in the business world through the mediation of models and designs, are presented as new and original in the chosen commodity sector and have a concrete function in individualizing the products”. Therefore, the novelty requirement does not provide that similar elements, figures or ideas cannot pre-exist; rather, what matters is that the subject, through the development of designs and models, has brought a feature of novelty and originality to the idea in its entirety.
The court stated that the earlier processing by another party of models that incorporated the ideas of France and Paris did not matter in this case because the models developed by the applicant transformed the concept or idea into a completely new form, bringing novelty and originality to the idea as a whole, as required by law.
Regarding the second requirement – individual character – the court clarified that for the purpose of the protection afforded to unregistered designs by the Community Designs Regulation, this requirement should be evaluated in light of the sector or industrial field of reference.
Further, the comparison of the product with the prior art should not be conducted on the exclusive grounds of the similarities
or differences in individual aspects of the design; instead it should be based on the general impression that the product evokes in an informed user. For the regulation of designs, the character of the informed user should be a qualified consumer with the ability to recognise the differences in the forms of a given field at a given time, who is more aware of the market than an average consumer. According to these considerations, the court found that the requirement of individuality was satisfied by the applicant’s products.
For the final requirement of copying, the court held that it needed high-level proof of the similarity of products, such as would render unlikely the process of self-creation by a competitor that knew the model.
In the case at hand, the court considered it a singular coincidence that the respondent had launched its collection in the season directly following that in which the claimant had presented its collection.
Therefore, bearing in mind the requirements of a prima facie case and the danger in delay, the Court of Naples:
• prohibited the respondent from producing, promoting, advertising or marketing in any form children’s clothes with its own trademark that reproduced those designed by the claimant;
• ordered the recall of such products, any other products which were identical or similar to the claimant’s unregistered designs and any relevant advertising materials;
• ordered the seizure of such products and of all products and advertising material containing identical or similar goods to the claimant’s unregistered designs which were found at the defendant’s or a third party’s offices, warehouse or stores;
• ordered the description and collection of the respondent’s accounting records in order to gather the evidence necessary to quantify the damage suffered by the applicant; and
• imposed a penalty of €500 for each day of delay in execution of the judgment and for each subsequent incident of non-compliance or violation.
The case involving the registered design originated in an action brought by the same plaintiff as in the above proceeding. In this case, the applicant argued that it had filed an application with the Italian Trademark and Patent Office to register the designs for its autumn/winter collection after it was presented at a global fashion event. The applicant also stated that its designs had been copied by the defendant, and that the latter had also put its own trademark on them.
According to Article 132 of the Code of Industrial Property, preliminary measures “may be issued even while the registration or patenting is still pending, provided that the application for registration or patenting has been made accessible to the public or to the persons on whom such application has been served”.
As this case dealt with registered designs, the claimant did not have to prove the requirements of novelty and individual character, but only that of copying. With regard to this requirement, the court stated that the protection was not limited to the designs and models identical to those recorded, but also extended to those with minor differences, provided that such differences did not create a different overall impression.
In this case, the comparison between the products of the two collections showed a clear similarity between the products, and the modifications made by the respondent appeared marginal compared to the models registered by the claimant. Therefore, the court issued against the defendant the same measures as it had ordered in the first case.
The full trial following a preliminary hearing can be particularly onerous for the counterfeiter, since the quantification of damages – beyond the usual rules – is based on Article 125(3) of the Code of Industrial Property, according to which “the injured rights holder can ask for the restitution of the profits earned by the infringer as an alternative to compensation for lost profits or in the amount they exceed longer available compensation”.
This risk, made concrete by the outcome of the preliminary proceedings, led the respondent to try to reach an agreement in order to avoid the claimant filing trial proceedings.
In both cases discussed here, an agreement was reached, taking as a benchmark the method for calculating damages set out in Article 125(3) of the Code of Industrial Property. Thus, the court awarded the claimant a significant amount.
The analysis of these two cases shows that the Italian system is particularly efficient in the protection of designs, both registered and unregistered.