Prada eyewear granted broad protection based on unregistered Community design rights

On March 28 2013 the Milan District Court confirmed that sunglasses sold by Prada SA under the name ‘Postcards’ are protected by unregistered Community design rights, and found that a model of sunglasses called ‘Lollipop’ sold by Nau Srl infringed such design rights. In addition, the court granted Prada’s claims of unfair competition by parasitism in relation to four additional models. This decision is significant because eyewear is a particularly crowded field in terms of designs, and is often the victim of parasitic imitations.

The dispute involved Prada’s ‘Postcards’ model of eyewear, a creative elaboration based on the model ‘Butterfly’, which is evocative of the 1950s icons and was made famous by actress Audrey Hepburn. The decision not only confirmed that the Prada models benefit from unregistered design right protection, but also that Nau took unfair advantage of the “huge investments made by Prada to promote the ‘Postcards’ model”, as well as of the “creative activity that led to the creation of that model”. The decision emphasised the contribution made by Prada in the very crowded field of eyewear design.  

With regard to damages, the court granted Prada’s claims for:

• the recovery of the profit made by Nau, which amounted to €40,000;
• compensation for the damage caused to its advertising investments, which amounted to €30,000; and
• compensation for the damage caused to its image, which amounted to a further €30,000.

The court also ordered the publication of the judgment in the magazine Donna Moderna, and on the infringer’s website for 30 consecutive days.

Giovanni Casucci, Bardehle Pagenberg, Milan

Bardehle Pagenberg acted on behalf of Prada in this case