Concomitance of Slavish Imitation and Design Infringement: a Case in Point

Recent ruling no. 8215/2014 of the IP Court of Milan is by no means a ground-breaking precedent, but it does provide a good example of cumulative protection of the design of a product (a subject which we have already addressed here).

A well-known Italian household appliances manufacturer acted on an urgent basis against a competitor, claiming infringement of a registered (national and international) design concerning a steam cleaner (Fig. 1) and unfair competition in the form of the slavish imitation of a product made ​​on the basis of the same design (Fig. 2), by means of a corresponding product marketed by the competitor (Fig. 3).

The Court granted the provisional measures requested by the applicant (ex parte description, seizure and injunction) on a prima facie basis. Shortly thereafter the applicant instituted ordinary proceedings on the merits, where it also sought damages. The merits proceedings resulted in the decision discussed here.

In essence, the Milan Court upheld all the plaintiff’s claims (rejecting in the process the defendant’s counterclaim of the invalidity of the design in suit).

On the issue of infringement, the Court took the view that the design of the defendant’s product did not produce a different overall impression on the informed user, on the contrary presenting the very features that conferred individual character on the plaintiff’s design, in particular

“…the combination of a bowl-shaped body with a flattened bottom and the replication of ribs … in the upper hemisphere, tapered towards the neck. From the latter, a handle element comes out, fitted with ergonomic shapes that curves downward and bears a command button”

The elements of alleged differentiation highlighted by the defendant (a boiler bending inwards unlike the spherical one of the design in suit, a smaller and more elongated body, ribs more “wavy” and less in number) were considered by the Court imperceptible from an overall viewpoint.

As to the plaintiff’s unfair competition claim, the Court took the view that it was well grounded on account of the

“… slavish imitation of the yellow/black combination of colours, both as to their shade and as to their distribution over the product — the core body in yellow, the nozzle, the lower support part and the cap in black, so as to make the two products completely identical.”*

In the Court’s view, these elements constituted

“a distinct tort in terms of confusing imitation, as they increase the risk of confusion between the products among the public”

Slavish imitation of the shape of a competitor’s product is indeed categorised in Italian law under acts of unfair competition that generate confusion among the public.
Accordingly, the Court ordered the defendant to pay damages, confirmed the provisional injunction already in place and ordered that a summary of the ruling be published at the defendant’s expense in a specialised magazine.

* The plaintiff’s product seen in Fig. 2, which was retrieved from the Internet, actually has slightly different colours; it is likely that the livery of the product has changed over the years (the litigation started in 2010).