The Turin IP court rules on design infringement and on the artistic value required for copyright protection

With a ruling dated 20 December 2024 in case with docket no. 24829/2021, the Turin IP Court ruled on infringement of registered designs, infringement of copyright and unfair competition in relation to the bracelets and rings of the Iconic Motion line by RF Jewels, allegedly counterfeited by the jewelry of the “Modo” line of a competing company.

RF Jewels claimed that its jewelry was characterised by having a rigid structure and, inside it, a sliding track on which interchangeable letters move to form different words, thus allowing for the maximum degree of customisation. According to the plaintiff, its registered designs were infringed by the defendant's jewelry, which in turn was characterised by a rigid and decomposable structure, with customisable moving letters inside. Furthermore, the marketing of the opposing jewelry constituted an infringement of the plaintiff's copyrights on its jewelry and unfair competition.

The decision in question, however, in accordance with the conclusions of the appointed expert witness, concludes that the plaintiff's registered designs do not cover the features of mobility and interchangeability of the letters, since these are not perceptible from the relative drawings, in which the letters are simply depicted in a static position. In this regard, the plaintiff's thesis that, in its registered designs, a "visual waiver" had been made to the letters in question (so-called "color shading"), precisely to indicate their interchangeability, is also dismissed; in fact, such a waiver requires "a clear and unequivocal visual difference between the parts that are the object of protection of the design and the parts that must instead be understood as waived", a difference that, according to the expert witness, "is not minimally perceptible " in the drawings in question.

That said, the Court confirms the validity of all the plaintiff's models except one (the last one below, no. 12, declared null for lack of individual character). Below are, on the left, the enforced designs and, on the right, the pictures of earlier products submitted by the defendant, with which the expert witness has made the comparison:

On the left, the enforced designs and, on the right, the pictures of earlier products submitted by the defendant

In particular, according to the expert witness, the general impression of the plaintiff's registered designs is different from that of the opposed prior art due to the particular configuration of both the lower part - "given by the curved box-shaped body and the perforated plate that defines the internal face of this body"- and the upper part - "given by the curved body with a flattened cross-section and the opening created on this body". This configuration, according to the expert witness, is significantly different from the completely open structure that characterises the earlier jewelry designs, essentially formed by two annular elements placed side by side and spaced apart and by some crosspieces that connect the two annular elements together.

In applying the same criteria, however, the decision concludes that the plaintiff's designs are not infringed by the defendant's bracelets and rings, since, like the earlier designs reproduced above, they "have an open structure essentially formed by two annular elements placed side by side and spaced apart and by some crosspieces that connect the two annular elements together ". Below are some images of the defendant's products reproduced in the judgment:

The ruling also excludes that the defendant's products may infringe the plaintiff's copyrights on the products in question: the Judges conclude in fact that the artistic value required by art. 2(1)(10) Italian Copyright Law for the copyright protection of industrial design products has not been proven.

In this regard, the ruling expressly specifies that it believes that this requirement must be applied despite it being excluded from the case law of the EU Court of Justice formed starting from the Cofemel case, which we have discussed here, on this blog: “In the Cofemel ruling, the Court of Justice also went so far as to point out that the only requirement required for the copyright protection of industrial design works must be the originality of the work. The Court maintains that it must be verified whether the object has the minimum originality requirements, without the possible lack of artistic character preventing the granting of protection. By virtue of this, in many European countries protection has been granted, for example, also to items of clothing or industrial design objects with a limited degree of creativity. (…) Despite the Cofemel decision, at present the internal legislation that provides for the requirement of artistic value is still in force and must therefore be applied”.

This position of the Turin court, which is shared by other trial courts, appears to be in contrast not only with the CJEU case-law, but also with that of the Italian Court of Cassation, which has already shown on several occasions that it adheres to the Cofemel jurisprudence: see the judgments commented here (Kiko), here (Vespa Piaggio) and here (Castiglioni 1954).

Finally, the ruling analyses the claims for unfair competition formulated by the plaintiff. On the one hand, it considers that the contested slavish imitation and misappropriation of qualities does not exist, since “the mobility and interchangeability of letters and symbols do not have an individualizing effect” and that in any case they were already present in the previous models reported by the defendant. On the other hand, however, it establishes unfair competition for misleading advertising, since the defendant had falsely advertised its products as “the first modifiable rigid bracelet”, “a product not yet present on the market”. This resulted in the order to also remove the advertising claim from the site and from all promotional material. However, no compensation for damages is recognised to the plaintiff in this regard.

In conclusion, the decision rejected most of the plaintiff’s claims; as a result, the plaintiff was ordered to compensate the defendant for part of the legal costs incurred by the latter.