Courts reaffirm construction of design protection rules that is fully in line with EU law


On February 2 2015 the Specialised IP Division of the Court of Milan issued a very important decision concerning the infringement of the copyright held by Flou in the shape of its well-known 'Nathalie' bed, designed by Vico Magistretti. The court ordered a number of important Italian furniture manufacturers to pay Flou compensation for damages and disgorge the profits accrued through the production and marketing of 'Nathalie' copycats.

Similarly, two recent rulings of the Specialised IP Division of the Court of Brescia (September 19 2014 and November 24 2014, respectively) rejected a claim of infringement against a well-known Italian tap manufacturer. The registered design to be protected and the allegedly infringing products were very similar in their most relevant features, but differed in the specific feature that distinguished the registered design from the state-of-the-art products, even when considered individually, as indicated by the Court of Justice of the European Union (ECJ) in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13).

The Court of Milan decision is extremely important because not only did it reaffirm in a very clear and comprehensive way the basic principles of Italian case law concerning the protection of industrial designs, including protection through copyright (the latter was introduced in Italy only in 2001), it also ruled again on the (highly disputed) issue of the interpretation of the transitory rule for works created before such protection for industrial designs was introduced, in a way which is fully consistent with EU law.

In Flos SpA v Semeraro Casa e Famiglia SpA (Case C-168/09), the ECJ stressed that such protection also applies to works created before the date of implementation of the Designs Directive (98/71/EC). This is now expressly stated in Article 239 of the Code of Industrial Property (as amended in 2010), which states that all copied products manufactured in Italy after April 19 2006 (and those imported after April 19 2001) may now be considered to be counterfeit.

However, in 2012 a deadline (April 19 2014) for selling off stocks of infringing products was illegitimately granted by the Italian legislation. So far, all attempts to remove this illegitimate rule have proved to be unsuccessful; a bill was even presented to the Italian Parliament, aiming to exclude from copyright protection unregistered designs created before April 19 2001.

Nevertheless, in its February 5 decision, the Court of Milan once again stated that the last version of Article 239 is plainly contrary to EU law. Consequently, the court opted to apply the 2010 version of Article 239, which provided for a transitional five year-period, as the court considered that it was consistent with EU legislation and the ECJ's case-law, as it had done in previous cases (see, in particular, the July 20 2012 decision of the Court of Milan protecting Cassina’s copyright in chairs designed by Le Corbusier; and the September 14 2011 and June 5 2012 decisions of the Court of Milan likewise protecting Flou’s copyright in the ‘Nathalie’ bed designed by Magistretti against a different infringer).

This decision also provided clear guidance on the interpretation of the criterion set forth in Italian law for a design to be eligible for copyright protection. In fact, when design protection through copyright law was made available in Italy through the implementation of Directive 98/71, the Italian legislator stated that copyright protection for the shape of products requires that the same must have an "artistic value". In examining whether the shape of the 'Nathalie' bed may be protected by copyright, the Court of Milan held that, in assessing the artistic value of the design, its perception in society and, in particular, the cultural environment in general, needs to be examined as objectively as possible. The same criterion had been invoked in previous decisions (see, in particular, the December 29 2006 order of the Court of Milan, upheld by an order of January 22 2007, concerning the famous Arco lamp) and, therefore, can now be considered as well-established case-law.

The central importance of the perception of the relevant public in determining both the validity and the scope of protection which shapes can enjoy was also considered by the Court of Brescia in its rulings of September 19 2014 and November 24 2014, which concerned the protection of the shape of a tap as a registered design. Both rulings dismissed requests for an interim injunction and seizure order against a well-known Italian tap manufacturer, even though the registered design and the allegedly infringing products were similar in their most relevant features. However, these features were also common to many earlier products and models, and the sector was crowded. Therefore, the court considered that the design was valid due to the limited freedom of the designer, but restricted its scope of protection to the specific relevant features which the informed user could perceive as new, in comparison with previous products. Since these features were not present in the allegedly infringing products, the infringement claim was rejected.

The perception of the public is thus the key issue for coordinating the wide range of legal instruments under which designs may be protected under Italian law - namely, copyright, registered and unregistered designs, and registered and unregistered shape trademarks.

Cesare Galli, IP Law Galli, Milan

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