A Ruling of the Milan IP Court on Cumulative Protection of Industrial Products

(The Italian version of this article appeared on Diritto 24 – an online section of Il Sole 24 Ore)

In the Italian legal system, an industrial product can enjoy cumulative protection under design, copyright, unfair competition, trademark, and even patent laws. The main effect of cumulative protection is to stretch the duration of the legal safeguard (which if, for example, confined to the protection by a design right, would be of 5 years, extendable up to a maximum of 25). Clarifying the conditions under which cumulative protection is conferred is, therefore, a matter of no small account. The IP Court of Milan has recently issued an interesting ruling on the subject (ruling no. 12773/2013).

A well-known Italian manufacturer of stylised ceramic figurines filed a lawsuit against two competitors, marketing items that allegedly infringed multiple rights subsisting in the plaintiff’s products. The figurines were all protected by registered community designs, but the plaintiff coupled the design infringement claim with claims of copyright infringement and unfair competition.

The Court addressed first the eligibility of the designs in suit for copyright protection. It discarded the possibility to consider them as sculpture works, due to their industrial nature, but pointed out that this was not an issue with regard to “works of industrial design with inherently creative and artistic character”, a category of works to which the Italian Copyright Law confers protection pursuant to Article 17 of Directive 98/71/EC. Having considered the aesthetic quality and strongly characterized style of the plaintiff’s products, conferred on them by their round shapes, by the materials used, the creamy colours, the dreamy look, the retro style, the presence of ornamental elements, the Court concluded that they were, indeed, eligible for copyright protection under the above provision.

The Court noted that, in copyright law, creativity does not identify with absolute originality and novelty, but, rather, with expressing the unique personality of the author, a quality that it found the plaintiff’s designs to possess. With regard to the intrinsic artistic value of the figurines, which the defendant denied, the Court pointed out that an industrial product made for serial production and everyday use may not be required to rouse the same aesthetic emotions of a painting or a sculpture. In support of its positive assessment, the Court cited the numerous acknowledgements of the plaintiff’s figurines in prominent magazines and exhibitions.

The unique stylistic imprint, that the Court found the plaintiff’s products to have, also affected the Court’s findings on design infringement and unfair competition.
On the first subject, the Court found that such stylistic imprint gave a unique and individual character to the designs in suit, producing a different overall impression from any prior designs.

The defendants’ products, in the Court’s view, not only reproduced the same subjects and the same postures of the plaintiff’s, but also presented the very distinguishing features – round shape, creamy colours, dreamy look, ornaments – distancing the latter from the prior art; as a consequence, they infringed the plaintiff’s registered designs.
The Court also found the imitation of the plaintiff’s products to constitute an act of unfair competition, albeit not under the “slavish imitation” doctrine – which would have required a blind reproduction of their appearance, which was not present in the case at issue – but under the doctrine of misappropriation of merits. In the Court’s view, the defendants’ products, by reproducing the peculiar features of the corresponding plaintiff’s products, echoed in the consumer’s perception the higher quality and value of those creations, proposing them and their style at a lower and more affordable price.

On these grounds, the Milan IP Court enjoined the defendants from manufacturing and marketing the infringing products, ordered the recall of the same from the market, and awarded damages and legal expenses to the plaintiff. As an additional remedy, the Court granted publication of the ruling on two major national newspapers at the defendants’ expenses.