The Milan IP Court protects the Freddy “push-up” pants

An Italian version is published on Diritto24 – Il Sole 24 Ore

By decision no. 2016/17 of 2 March, the Milan IP Court declared the validity and infringement of a patent and a Community unregistered design held by Freddy S.p.A. on its pants named “WR.UP”. Specifically, the pants were characterised by the fact that they “combine the advantages arising from the use of a knit fabric, i.e. jersey, which ensures comfort and fit, with the function to shape the hips and buttocks, thanks to particular technical solutions.”

The party accused of infringement was a Roman company owned by a Chinese company. The latter actually, the decision highlights, had not contested the finding of the expert witness appointed by the Judge, according to whom the Freddy patent was valid and infringed by the defendant. The Court hence endorsed this conclusion, noting that it was “suitably and comprehensively motivated” and therefore declared the infringement of the plaintiff’s patent.

As regards the plaintiff’s unregistered Community design, the Court then stated that it met the requirements of novelty and individual character required by law, as the elements of which it consisted “if considered individually can seem trivial, but in their specific combination seem able to give the design the proper individual character“. Hence, the Judges also declared the infringement of this IP right, as “the defendant’s pants are completely identical in the details that give individual character to those of the plaintiff“. Moreover, the Judges said, “it was for the defendant to prove the absence of novelty and individual character, i.e. the presence of identical or similar models on the market giving the same similar general impression, but, in that regard, the defendant has not put forward anything.”

In light of the ascertained infringement, the Court therefore ordered the defendant to cease all sales of the disputed pants and withdraw them from the market, fixing a penalty of € 70 for each additional infringing item sold. It also condemned the defendant to pay compensation for the damages suffered by the plaintiff, quantified (in line with the findings of the accountant expert witness appointed by the Court) at € 50,000 based on the number of products sold by the defendant, in addition to € 15,000 on account of damages to image, on the assumption that “there is no doubt that the commercial reputation of the plaintiff was compromised by the presence on the market of the infringing products at a significantly lower price“. The defendant was also ordered to pay the costs of the two (technical and accounting) expert witnesses, the fees of the plaintiff’s technical adviser and the legal costs. Finally, the Court ordered the publication of the judgment in Il Sole 24 Ore newspaper, in font double than usual size, all at the defendant’s costs.