Landmark decision on registered designs issued


On December 18 2008 the IP Division of the Court of Milan issued a landmark decision on the protection of registered designs.

The case concerned the infringement of a registered Community design, the 'Outline' door, which was created by Lualdi SpA, an Italian firm which is a world leader in the field of door design. Lualdi's products are present in some of the most innovative buildings around the world, and have often been created in cooperation with famous architects or designers. 

The 'Outline' door is completely detached from the wall and appears as a separate piece of furniture or decoration. Lualdi alleged that the design had been infringed by another Italian firm. In its defence, the defendant argued that the design was invalid.
The Court of Milan disagreed, holding that the design was valid and had been infringed by the defendant. The court thus issued a preliminary injunction preventing the defendant from using the design. It also ordered the defendant to pay a fine of €1,000 for each violation, as well as the costs of the proceedings.

The court reached this conclusion based on two important general principles.

First, the court expressly defined an 'informed user' as a purchaser who is particularly attentive to the goods in question and usually compares them in a purchasing situation, but is not an architect or a designer. Therefore, the 'informed user' is a consumer. This definition is in line with the rationale underlying design protection - namely, to protect the shape or configuration of the design.  
Second, the court stated that the individual character of a design may result from the combination of the characteristics of previous designs, provided that the general impression conveyed by the new design differs from that given by the previous models. This is the first time that this principle has been recognized by an Italian court. This statement also seems to be in line with the rationale of design protection, since combining pre-existing designs may be a fundamental part of a designer's work.

Cesare Galli, Studio Galli Milan Brescia Parma, Milan

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