Italy: Case law lessons on design protection

Case law lessons on design protection

Contributed by IP Law Galli

Italian case law has dealt extensively with issues surrounding the protection of design. However, few decisions relate purely to designs, as the different methods of protecting product shapes are closely linked.

Differing scopes of protection

This interconnection is exemplified by the order issued by the specialist IP division of the Court of Turin on March 20 2008 concerning the external shape of the Smart car, in which protection was granted for the design both as a registered model and as a shape trademark, with different scopes of protection.(1) One of the allegedly infringing car designs was held to fall foul of both types of protection, whereas the shape of a different car was held to amount only to unregistered trademark infringement, with the registered model claim being dismissed. The court stated that:

"The exclusion of the infringement of a Community design on the grounds that the allegedly illicit product actually creates a different overall impression... does not prevent [the court] from finding that the same product amounts to an infringement of the same shape, as registered as a Community trademark, since the two IP rights at issue each perform different functions and enjoy a different scope of protection, that of the trademark being much wider, and considering also that the relevant public is different (ie, the average consumer for trademarks and the much more attentive... informed user)."

Two key tests

Two distinctions are particularly relevant in model infringement litigation in Italy: overall impression versus likelihood of confusion, and the view of the average consumer compared with that of the informed user.

A decision by the specialist IP division of the Court of Milan on January 17 2006 indicates a significant aspect of the courts' approach.(2) The case concerned a well-known screwpull corkscrew design and the protection available to it as an unregistered trademark. The court ruled that the shape of a product can be protected, even if it is not registered as a mark or a design, on the basis of a reputation that leads the relevant consumers to perceive it as a symbol of the manufacturer. It has been noted that:

"distinctive character and individual character may be placed on a par, since they are both based on the perception of the public, but they protect two different functions of the product shape. Individual character relates to the shape per se, whereas distinctive character relates to significance or meaning that is additional to the mere shape itself - that is, the other possible messages and implications communicated by the shape."(3)

The latter significance is usually a result of the product's use. As a result, individual character does not equate to distinctive character:

"as the two concepts are differentiated essentially on the basis of the parties to whose judgment reference is made - the average consumer in the case of distinctive character and the informed user for individual character."

Moreover, the same commentator remarked that:

"[i]n this regard, a further step could be taken in saying that the relationship between individual character and the use of a shape and the success that a product attains on the market also differs from the relationship between individual character and distinctive character. However, there is a form of cause and effect relationship between the two, in the sense that individual character may be a vehicle for the success of a shape on the market, while distinctive character is a possible consequence of such success, in the sense that individual character may be a vehicle for success."

Most experts would agree, with the caveat that the perception of a shape as aesthetically significant is often linked to the advertising and other communications that accompany it. Thus, there is a significant distinction between a sign (with a meaning or significance) and a shape in itself.

Relationship between validity and scope of protection

Case law has also recognised the importance of the relevant public's perception in determining both the validity and scope of protection that shapes can enjoy.

On August 30 2007 the Court of Milan dismissed requests for an interim injunction and seizure order against a well-known Italian tap manufacturer.(4) The court accepted the opponent's argument, stating that a model is not infringed if the allegedly infringing product does not copy the features with which the general impression given by the protected model is principally associated - these represent the "prevailing characteristic visual feature". The ruling issued on appeal excluded the possibility of re-examining the case under unfair competition law, confirming that protection for shapes against unfair competition presupposes that they are non-functional and perceived as distinctive.

The particularly significant aspect of this case was that the model for which protection was sought and the allegedly infringing products were very similar in their most prominent features. However, these features were also common to many earlier products and models in a busy sector. Therefore, the court considered the model to be valid, given the limited scope available to a designer in the field, but restricted protection to the specific features that an informed user would perceive as new in comparison with previous products. As these features were not part of the allegedly infringing product, the infringement claim was rejected.

In addition, it was held that even if a sector is busy, a model is not entitled to protection if its new features do not create a different overall impression in the mind of the informed user. In practice, the 'busy sector' doctrine may be taken into consideration only in determining how an informed user would perceive and evaluate differences - the overall impression remains the sole criterion for assessing validity and infringement.

Although the Italian version of Article 6 of EU Regulation 6/2002 identifies the relevant test by stating that "the general impression on the informed user differs significantly from the general impression on such a user of any design or model that has been made known to the public", Article 33 of the Code of Industrial Property does not include the word 'significantly'. Italian case law has hitherto relied on the latter wording, even when the validity or assumed infringement of a Community design is being assessed, since the difference in wording is usually considered to be merely a translation error. Thus, a party is not required to show a specific degree of difference in the overall impression, but merely that the shape is perceived as different in the overall view of the relevant user.

Overall impression and the relevant user

The Court of Milan has also provided a landmark decision on overall impression.(5) The case concerned the infringement of a registered Community design for a model of door created by Lualdi SpA, an Italian firm which is a world leader in door design. The Outline door detaches completely from the wall and has the appearance of a separate piece of furniture or decoration. Lualdi claimed that its design had been infringed by another Italian firm. The defendant argued that the design was invalid and that no infringement had taken place. The court found that the design was valid and had been infringed by the defendant.

The court reached its conclusion on the basis of two general principles.

First, the court expressly defined the term 'informed user' as a purchaser who pays particular attention to the goods in question and usually compares goods before making a purchase, but is not an architect or a designer. Therefore, an informed user is a consumer. This definition is in line with the rationale underlying design protection - that is, to protect the shape or configuration of a design as a business tool on the market.

Second, the court stated that the individual character of a design may be the result of a combination of characteristics of previous designs, provided that the general impression conveyed by the new design differs from that of the previous models. This principle had not previously been explicitly recognised by an Italian court. This statement also appears consistent with the rationale of design protection, as combining pre-existing designs may be a fundamental part of a designer's work. Moreover, the perception of the relevant public (ie, informed users) was considered the central issue in design cases when determining the validity and scope of protection of a model. In this respect, prevailing characteristic visual features must be considered as a whole, as to consider them individually would contradict the 'overall impression' criterion.

The same argument was decisively applied in Fiat Auto Spa v Great Wall Motors Co Ltd.(6) The Court of Turin disagreed with the opinion expressed by the appointed court expert, as the prevailing characteristic features were identified in terms of "the general lines and proportion of shapes", irrespective of the differences concerning other features - particularly the front view of the cars - and the considerable creative freedom that a car designer is deemed to have.

Burden of proof

In design cases, the issue of burden of proof may be misleading. In Italian law, a design registration is presumed to be valid unless an opponent presents evidence that such a design does not meet the legal requirements for protection. Thus, the onus of proving invalidity is on the opponent. However, this burden relates only to the existence of previous models or products - it is the court's role to evaluate them. Similarly, in order to demonstrate infringement, the owner of the design registration need merely prove the existence of such a right and show that the product is manufactured or marketed in Italy, leaving the assessment of the infringement to the court. However, in the case of unregistered Community designs, protection is "conditional on proof being provided that the requisites for access to protection apply",(7) thus placing a particularly heavy burden of proof on the party seeking protection.

On September 8 2005 the specialist IP division of the Court of Bologna issued the first decision to grant protection in Italy to non-registered models on the basis of the regulation. The court stated that the holder had mentioned "the aspects of the product which give it its individual character" and had supplied evidence that the design had been made public within the European Union. Moreover, a comparison of the samples of the original product and that of the alleged infringer "demonstrate[d] such a level of similarity in the individual nature of the models as to render creative coincidence improbable".

Protection was accorded because the court found that the features which gave the product at issue its individual character (ie, the prevailing characteristic features), considered as a whole, had been copied.

Copyright protection

Italian law extends copyright protection to product shapes, but requires that such shapes have artistic value. Thus, such protection tends to be confined to design masterpieces, such as the famous Arco lamp.

Public perception is also decisive factor. In examining whether the shape of the Arco lamp could be protected by copyright, the Court of Milan held that "in assessing the artistic value of the work, its general perception in society and, in particular, in the cultural environment must be viewed as objectively as possible".

The lamp is also the subject of a case pending before the European Court of Justice(8) concerning the compatibility of the former Italian transitional rule on design (under Article 239 of the code) with EU law, as the Italian rule appears to limit copyright protection of designs by allowing parties that began copying such designs before the introduction of protection under Italian law (ie, as a consequence of the enactment of EU Directive 71/1998/EC) to continue such copying indefinitely. The advocate general's comments in June 2010 clearly stated that the Italian rule was inconsistent with the directive (for further details please see "Interim rules on copyright protection for designs in line with EU law").

The recent reform of the Code of industrial Property(9) introduced a new Article 239 which takes account of the advocate general's remarks. It provides that all such copy products manufactured in Italy after April 19 2006 (and those imported after April 19 2001) are pursuable as counterfeit, as the directive originally stated.(10) This rule ends a decade-long controversy and ensures that the world of Italian design enjoys rightful protection.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094), fax (+39 02 5412 4344) or email (galli.mi@iplawgalli.it).

Endnotes

(1) In Giur Ann Dir Ind, 5282/2008.

(2) Ghidini SpA v Alexander Srl. The January 17 2006 decision was later upheld in an order of February 1 2006.

(3) See Brambilla, "Carattere individuale e capacità distintiva nella tutela delle forme registrate e non registrate", IDI, 2007.

(4) Faris Srl v IB SpA, upheld on appeal in a ruling of October 25 and 27 2007.

(5) See Galli, "Landmark decision on registered designed issued", World Trademark Review Daily, February 13 2009.

(6) Order issued on July 15 2008 and upheld on September 8 2008. See Giur Ann Dir Ind, 5305/2008.

(7) See Bogni, "La tutela della forma tra design non registrato, marchio di fatto, concorrenza sleale", Not Ord Consulenti, March 2007.

(8) C-168/09.

(9) See Law 131/2010.

(10) See Galli, "Vast reform of Industrial Property Code comes into force", in World Trademark Review Daily, September 24 2010.