The Milan IP Court on Community design infringement and the slavish imitation of a designer watch

The Milan IP Court, with ruling no. 8986/2016 published on 18 July 2016, stated that the commercialisation of some watches made by the Italian competitor Blu Trade S.r.l. and its distributor, Coin S.r.l., infringed the Community design no. 919204-002, registered in 2008 by the Danish company Noon Copenhagen AS, and that such activity also constituted unfair competition for slavish imitation.

Here are the facts. The Danish company, together with its exclusive Italian distributor, sued the Italian competitor and Coin, requesting the Milan Court to have them enjoined from commercialising their watch model branded “Easy Time”, since it constituted both infringement of the abovementioned Community design (reproducing the shapes of a particular watch dial consisting in three overlaid discs capable of creating different games of colour depending on the hour indicated by two lancets) and unfair competition for slavish imitation of the product covered by the latter. Accordingly, they also sought damages. The defendants appeared, arguing that all the claimants’ claims were unfounded. Furthermore, the Italian competitor filed a counterclaim of invalidity of the enforced design for lack of novelty and individual character and Coin requested it be indemnified by the latter in case of adverse judgment pursuant to an earlier agreement existing between them.

Firstly, the Judges considered the design enforced by the claimants valid. Contrary to the defendants’ arguments, in fact, they stated that: a) the design shapes (e.g. the multiple-disk representation) definitely come from a purely aesthetic choice and do not improve the functionality of the product nor enhance its performance; b) the enforced design is new, given that the earlier design identified by the defendants – by the way, owned by Noon Copenhagen – appears similar but not identical to the first, having only due discs without any lancet rather than two lancets and three discs; c) the design at issue has an individual character, because the impression generated in the informed user, able to find even a slight difference undetectable to the average consumer, appears basically different from that generated both by the earlier design under b) and by a second design, registered in 2006, the main features of which were the specific colours and the game of light created by the lancets.

Secondly, the Court also acknowledged the design infringement made by the defendants. To the Judges, in fact, the dial of the Easy Time watch and the dial represented by the design at issue generate almost identical games of light, given that in both there are three discs and two lancets, so that the resulting chiaroscuro contrast is the same: in fact, they both have a light and a dark area, each including in turn a paler clove.

Also with regard to the unfair competition for slavish imitation, the Judges granted the claimants’ claims, due to the almost complete similarity existing between the watches commercialised by the parties, capable of bringing consumers to believe that the latter come from the same company. Such similarity arises from the fact that the Easy Time watch totally reproduces, in the strap and dial, both the colours and the drawings of the claimants’ watch, as well as the position and size of the latter, so that the former’s slight differences are absolutely undetectable to the average consumer. In this context, the circumstances highlighted by the defendants in order to exclude the likelihood of confusion between the products are insignificant. In fact: a) the presence of the Easy Time trademark on the defendants’ product is irrelevant, because the consumer could think that the latter belongs to a second production line of the fair competitor; b) nor are the different prices of the products relevant, given that both are destined for the same kind of consumers; c) nor can the different packaging be considered relevant, since both the competitors use a common and partially/totally transparent packaging for their products.

In light of all the above, the Judges enjoined the defendants from manufacturing, commercialising and advertising the Easy Time watch, establishing a penalty of € 40 for any watch commercialised after the publication of the ruling under review. They also ordered both defendants jointly and severally – although having acknowledged Coin’s right to be indemnified – to pay both compensation for damages, totally amounting to € 30,000 given the low sales and limited distribution of the infringing products (and including damages to the claimants’ image), and the legal fees.