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23 March 2015
On February 2 2015 the Specialised IP Division of the Court of Milan issued an important decision concerning 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.
In addition, two recent rulings of the Specialised IP Division of the Court of Brescia (September 19 2014 and November 24 2014) rejected a claim of infringement against a well-known Italian tap manufacturer. The registered design in question and the allegedly infringing products were 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 European Court of Justice (ECJ) in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13).
The Court of Milan decision is important because it not only reaffirms clearly and comprehensively the basic principles of Italian case law concerning the protection of industrial designs, including copyright protection (which was introduced in Italy only in 2001), but also addresses the highly disputed interpretation of the transitional rule for works created before such protection was introduced – and 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 implementation of the EU 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 counterfeit.
However, in 2012 a deadline of April 19 2014 for selling off stocks of infringing products was illegitimately granted by the Italian legislature. So far, all attempts to remove this illegitimate rule have failed; a bill was even presented to Parliament to exclude from copyright protection unregistered designs created before April 19 2001.
Nevertheless, in its recent decision the Court of Milan once again stated that the latest 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 it considered this to be consistent with EU legislation and ECJ case law – and as it had ruled in previous cases.(1)
This decision also provided clear guidance on the interpretation of the criterion set out in Italian law for a design to be eligible for copyright protection. When design protection through copyright law was made available in Italy through implementation of the Designs Directive, the Italian legislature stated that copyright protection for the shape of a product requires that the shape have "artistic value". In assessing the artistic value of the design of the Nathalie bed and thus whether its shape may be protected by copyright, the Court of Milan held that its perception among the public in particular and the cultural environment in general must be examined as objectively as possible. The same criterion was invoked in previous decisions(2) and can thus now be considered well-established case law.
The central importance of the perception of the relevant public in determining both the validity of and the scope of protection for shapes 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 would 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 – in particular, copyright, registered and unregistered designs, and registered and unregistered shape trademarks.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (email@example.com). The IP Law Galli website can be accessed at www.iplawgalli.it.
(1) See 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 which likewise protected Flou's copyright in the Nathalie bed against a different infringer.
(2) See the December 29 2006 order of the Court of Milan, upheld by an order of January 22 2007, concerning the famous Arco lamp.
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